WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Marketing Corp. v. 杨智超 (Yang Zhi Chao a/k/a Zhichao Yang)

Case No. D2021-3157

1. The Parties

The Complainant is Artemis Marketing Corp., United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.

The Respondent is 杨智超 (Yang Zhi Chao a/k/a Zhichao Yang), China.

2. The Domain Names and Registrars

The disputed domain name <riomstogo.com> is registered with Alibaba Cloud Computing (Beijing) Co., Ltd.; the disputed domain name <roomstpgo.com> is registered with Cloud Yuqu LLC; and the disputed domain names <romostogo.com>, <roomsotgo.com>, <roomstgoo.com>, <roomstogos.com>, <roomstog0.com>, <roomst0go.com>, <roosmtogo.com>, <rpomstogo.com>, and <r0omstogo.com> are registered with DNSPod, Inc. (together the “Registrars”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2021. On September 24, 2021, the Center transmitted by email respectively to the Registrars a request for registrar verification in connection with the disputed domain names. On September 26, 2021, the Registrars each transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 29, 2021 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint in English on September 30, 2021.

On September 29, 2021, the Center transmitted another email communication to the Parties in English and Chinese regarding the language of the proceeding. On September 30, 2021, the Complainant confirmed its request 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 October 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2021.

The Center appointed Sok Ling MOI as the sole panelist in this matter on November 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 Complainant was founded in 1991 and its licensees operate retail furniture stores and sell furniture under the Complainant’s various ROOMS TO GO marks in the United States, and on the Internet through various websites, including the official “Rooms To Go” website at “www.roomstogo.com”. The Complainant first used its ROOMS TO GO marks in commerce on or before May 8, 1992. The Complainant has approximately 150 showrooms and USD 2 billion in sales.

The Complainant is the proprietor of numerous trade mark registrations in the United States for ROOMS TO GO, including the following:

The disputed domain names were registered on May 22, 2020, July 30, 2020 and June 27, 2021 respectively. According to the evidence submitted by the Complainant, each of the disputed domain names resolves to a parking webpage featuring sponsored links to third party websites some of which offer furniture in competition to the Complainant’s business. As of the date of this decision, none of the disputed domain names resolves to active websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the disputed domain names is an intentional misspelling of the Complainant’s trade mark and is a blatant case of typo-squatting. The Complainant claims that the disputed domain names are confusingly similar to its ROOMS TO GO trade mark.

The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain names to publish parking webpages featuring sponsored links to third party websites for financial gain, is not a bona fide use of the disputed domain names. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain names.

The Complainant contends that the disputed domain names are used to create confusion and mislead Internet users into believing that the Respondent’s websites are authorised by the Complainant. The Complainant claims that the Respondent has registered and is using the disputed domain names in bad faith.

Furthermore, the Complainant contends that the Respondent is a known, adjudicated serial cybersquatter with a large number of adverse UDRP decisions against it.

For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant.

B. Respondent

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

6. Discussion and Findings

6.1 Language of the Proceeding

Pursuant to paragraph 11(a) of the Rules, 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.

Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.

The language of the Registration Agreements for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.

Although the Respondent appears to be a Chinese individual by the name of “杨智超 (Yang Zhi Chao a/k/a Zhichao Yang)”, the Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:

(a) the disputed domain names are registered in Latin characters, rather than Chinese script;

(b) according to the evidence submitted by the Complainant, the contents of the websites to which the disputed domain names resolve are in English.

Additionally, the Panel notes that:

(a) the Center has notified the Respondent in both Chinese and English of the proceeding;

(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but chose not to do so; and

(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese, but none was filed.

Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.

In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.

6.2 Substantive Findings

Paragraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(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.

On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Panel accepts that the Complainant has rights in ROOMS TO GO by virtue of its use and registration of the same as a trade mark.

Each of the disputed domain names is an obvious misspelling of the Complainant’s trade mark through the altering of one or two character(s). Each of the disputed domain names is a foreseeable typographical variant of the Complainant’s domain name registration <roomstogo.com>.

The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains recognizable in the domain name.

Consequently, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s ROOMS TO GO trade mark.

Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:

(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.

(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)

The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the ROOMS TO GO trade mark or to seek registration of any domain name incorporating the trade mark. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “roomstogo”.

According to the evidence submitted by the Complainant, each of the disputed domain names resolves to a parking webpage featuring sponsored links to third party websites some of which offer furniture in competition to the Complainant’s business.

Presumably, the Respondent receives pay-per-click (PPC) fees from the linked websites. UDRP panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Panel is satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to come forward with evidence of its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.

Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.

Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the
registration and use of the disputed domain name in bad faith, namely:

(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the 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 trade mark 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 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.

The Panel accepts that the Complainant’s ROOMS TO GO trade mark has a strong reputation. A cursory Internet search would have disclosed the ROOMS TO GO trade mark and its extensive use by the Complainant. Thus a presumption arises that the Respondent was aware of the Complainant’s ROOMS TO GO trade mark and the official website at “www.roomstogo.com” when it registered the disputed domain names. Registration of a domain name that incorporates a complainant’s long-established and well-known trade mark suggests opportunistic bad faith.

According to the evidence submitted by the Complainant, each of the disputed domain names resolves to a parking webpage featuring sponsored links to third party websites some of which offer furniture in competition to the Complainant’s business. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content - for example, in the case of advertising links appearing on an “automatically” generated basis. The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third-party trade marks. In the Panel’s opinion, such links clearly seek to capitalize on the trade mark value of the Complainant’s ROOMS TO GO trade mark resulting in misleading diversion.

The Panel determines that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel is satisfied that the Respondent has registered and is using the disputed domain names for mala fide purposes and commercial gain, and the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.

Further, the Panel also determines that the current non-use of the disputed domain names would not prevent a finding of bad faith in the circumstances of this case under the doctrine of passive holding. See section 3.3 of the WIPO Overview 3.0.

The Respondent has not filed any response to deny the Complainant’s allegations of bad faith. In view of the Panel’s above finding that the Respondent lacks rights or legitimate interests in the disputed domain names, and taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.

Accordingly, the Complainant has satisfied the requirements of the third element under 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 names, <riomstogo.com>, <roomstpgo.com>, <romostogo.com>, <roomsotgo.com>, <roomstgoo.com>, <roomstogos.com>, <roomstog0.com>, <roomst0go.com>, <roosmtogo.com>, <rpomstogo.com>, and <r0omstogo.com>, be transferred to the Complainant.

Sok Ling MOI
Sole Panelist
Date: December 18, 2021