WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Marketing Corp. v. Domain Administrator, Fundacion Privacy Services LTD; Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico; Domain Admin, Whois Privacy Corp.; Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-3481

1. The Parties

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

The Respondents are Domain Administrator, Fundacion Privacy Services LTD, Panama; Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundacion Comercio Electronico, Panama; Domain Admin, Whois Privacy Corp., Bahamas; and Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf, Iceland / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Names and Registrars

The disputed domain name <roomsgogo.com> is registered with Media Elite Holdings Limited dba Register Matrix.

The disputed domain name <roomstoyo.com> is registered with GoDaddy.com, LLC.

The disputed domain name <roomstugo.com> is registered with Internet Domain Service BS Corp.

The disputed domain name <ro0mstogo.com> is registered with NameCheap, Inc.

(Collectively the “Registrars”.)

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrars requests for registrar verification in connection with the Domain Names. On October 21 and October 22, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 23, 2021 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 25, 2021.

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 Respondents of the Complaint, and the proceedings commenced on November 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondent’s default on November 25, 2021.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on December 6, 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 trademarks and service marks, and on the Internet through various websites, including the official website at “www.roomstogo.com”. The Complainant has approximately 150 showrooms and USD 2 billion in sales.

The Complainant owns numerous US trademark registrations incorporating ROOMS TO GO, including US Reg. No. 1,756,239 registered on March 2, 1993, and US Reg. No. 2,396,055 registered on October 17, 2000. The Complainant has also since 1996 registered the domain name <roomstogo.com>.

The disputed domain name <roomstoyo.com> was registered on February 5, 2021. The disputed domain name <roomsgogo.com> was registered on May 19, 2021. The disputed domain name <roomstugo.com> was registered on May 26, 2021. The disputed domain name <ro0mstogo.com> was registered on June 4, 2021.

The Complainant has documented that the Domain Names have redirected to webpages with suspicious content that triggered malware security safeguards.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Names are registered to the same person or under the common control by connected parties (the “Respondent”), and thus that consolidation would be fair and equitable. For two of the disputed domain names (<roomstogo.com> and <roomstoyo.com>), the registrant is listed as Carolina Rodrigues, Fundacion Comercio Electronico. The registrant information for <roomstugo.com> and <roomsgogo.com> provided by the registrars does not appear to identify the true registrant. The disclosed registrant of the first two domain names is a known cybersquatter with a pattern of using the same anonymous registration services used in this case. The Complainant argues that the listed registrants are likely to be the same. The information available from WHOIS overlap, and for all Domain Names there is the same modus operandi used, as they re-direct users to websites (which are identical to each other) in an attempt to distribute malware.

The Complainant provides evidence of trademark registration, and argues the Domain Names were registered after the Complainant’s trademark registrations, and that the Domain Names are confusingly similar to the Complainant’s trademark. The Domain Names are intentional misspellings of the Complainant’s trademark by one character.

The Complainant asserts that it has no association with the Respondent and has never authorized or licensed the Respondent to use its trademark. The Respondent is a serial cybersquatter who has never been known under the Complainant’s trademark. The Respondent cannot establish rights in the Domain Names, as it has not made any use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services. On the contrary, the Complainant submits that the Respondent’s only use of the Domain Names is part of a scheme to lure consumers to the Respondent’s websites for commercial gain/illegally target consumers with malware.

The Complainant argues that the Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the Domain Names. The Respondent’s registration and use of the Domain Names are clear instances of typosquatting. The Domain Names are almost identical to the Complainant’s trademark. The Respondent is a well-known cybersquatter with a long pattern and practice of typosquatting on well-known trademarks. Moreover, the Respondent has chosen to conceal its true identity through the use of various anonymous registration services to hide its identity while distributing malware.

B. Respondent

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

6. Discussion and Findings

A. Procedural matters

The Complainant argues that the disputed domain names are under common control. The Panel has carefully examined the evidence in the case file and notes that the registrants have not – despite being given the opportunity – argued or filed any evidence to rebut. The Panel notes the nature of the trademark and the Domain Names, and the use of the Domain Names. The Panel further notes that the disclosed registrant of the first two domain names is a known cybersquatter. The WhoIs information for all of the Domain Names have elements of overlap. Based on the evidence, and a consideration of procedural efficiency, the Panel orders consolidation of the disputed domain names as the consolidation would be fair and equitable to the Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.11.2.

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark ROOMS TO GO. The test for confusing similarity involves a comparison between the trademark and the Domain Names. The Domain Names incorporate the Complainant’s trademark in its entirety and are different to the trademark by only one character in a typosquatting scheme. A domain name which consists of an obvious misspelling of a trademark is considered to be confusingly similar to the relevant mark, see WIPO Overview 3.0, section 1.9. The minor alterations do not prevent a finding of confusing similarity between the Domain Names and the trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains, see WIPO Overview 3.0, section 1.11.

The Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired unregistered trademark rights. The Respondent cannot establish rights in the Domain Names. The Domain Names has redirected Internets users to webpages with suspicious content that triggered malware security safeguards, which indicates that the Respondent does not have any rights or legitimate interests in the Domain Names, see WIPO Overview 3.0, section 2.13.1. The Respondent’s use of the Domain Names is therefore clearly not bona fide, but rather evidence of bad faith, see below.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel finds it probable that the Respondent was aware of the Complainant when the Respondent registered the Domain Names. The Respondent has registered and used the Domain Names in a fraudulent typosquatting scheme, to lure consumers to the Respondent’s websites for commercial gain/illegally target consumers with malware. The Respondent has not provided any evidence of good-faith use. The Respondent seems to be a cybersquatter with a pattern of typosquatting. In previous UDRP cases, the Respondent has been ordered to transfer the domain names in dispute to the concerned trademark owners, see, e.g., Take-Two Interactive Software, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-1023 and Bulgari S.p.A. v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2021-2512. In this context, the Respondent’s use of a privacy protection service to conceal its identity further points to bad faith.

For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of 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 Names, <roomsgogo.com>, <roomstoyo.com>, <roomstugo.com>, and <ro0mstogo.com>, be transferred to the Complainant.

Mathias Lilleengen
Sole Panelist
Date: December 15, 2021