WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Artemis Marketing Corp. v. Elia Tan, Domain Dotter, and Marc Estphan, Domain Dotter
Case No. D2021-3482
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 Elia Tan, Domain Dotter, and Marc Estphan, Domain Dotter, Canada.
2. The Domain Names and Registrar
The disputed domain names <roommstogo.com> and <rroomstogo.com> are registered with Wild West Domains, LLC Wild West Domains, LLC (the “Registrar”).
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 Registrar a request for registrar verification in connection with the disputed domain names. On October 22, 2021, the Registrar 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 October 28, 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 29, 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 Respondents’ default on November 25, 2021.
The Center appointed Gareth Dickson as the sole panelist in this matter on December 14, 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, formerly known as “Rooms To Go, Inc.”, is a furniture store chain based in the United States. The Complainant was founded in 1991 and now has over 150 showrooms and USD 2 billion in sales.
The Complainant is the owner of a number of trade marks registrations for “ROOMS TO GO” (the “Mark”), including:
- US Trademark Reg. No. 1756239, registered on March 2, 1993; and
- US Trademark Reg. No. 2396055, registered on October 17, 2000.
The disputed domain name <roommstogo.com> was registered on April 24, 2008 and the disputed domain name <rroomstogo.com> was registered on September 22, 2010 (together, the “Disputed Domain Names”). The Disputed Domain Names currently direct Internet users to a webpage featuring what appears to be sponsored links to parties other than the Complainant.
The Disputed Domain Names are registered in two different registrant names, and were registered on two different dates. Nonetheless, the Complainant has requested that its objection to both domain names be consolidated into a single Complaint under Paragraph 10(e) of the Rules, which states that: “A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.” The Panel is willing to so consolidate both disputes into this single Complaint, for the following reasons.
Paragraph 4(f) of the Policy permits a Panel to consolidate “any or all such [domain name] disputes in its sole discretion”. Although this discretion is seemingly unfettered, it should be used to facilitate the objectives of the Policy, and even then it should be used in a manner that is neither unpredictable nor arbitrary. A consensus among Panels as to the factors a Panel should consider when exercising that discretion, as set out in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), with a view to ensuring that the domain names at issues are subject to common control, and that consolidation would be fair and equitable to all parties (i.e., not just the Complainant(s) and not just the Respondent(s)). These factors include: the registrants’ contact information including email address(es), postal address(es), or phone number(s); the content or layout of websites corresponding to the disputed domain names; the nature of the marks at issue; any naming patterns in the disputed domain names, amongst others. A Panel can also have regard to procedural efficiency in weighing these factors.
The Panel has had regard to the provisions set out above and in the WIPO Overview 3.0 and has noted that the Disputed Domain Names both originally identified “Domain Dotter” as their registrant organisation (without any other qualifying contact identification) and that they both use the same postal and email addresses. Both Disputed Domain Names were registered with the same Registrar. Furthermore, both Disputed Domain Names are very similar examples of typosquatting of the Mark, and both are used to point their typosquatting versions of the Mark to virtually identical pay-per-click (“PPC”) websites. Lastly, neither of the named Respondents responded to the Complaint and there is no evidence that either or both of them would have participated in a proceeding involving just one of the Disputed Domain Names. Accordingly the Panel has determined that it is appropriate to consolidate the Complainant’s disputes against the Disputed Domain Names into a single proceeding.
5. Parties’ Contentions
The Complainant argues that it has rights in the Mark by virtue of its ownership of various trade mark registrations for the Mark around the world. It contends that the Disputed Domain Names are examples of typosquatting and are confusingly similar to the Mark since they incorporate the Mark (which is recognisable within the Disputed Domain Names) with the misspelling of the Mark by one character, namely “roommstogo” and “rroomstogo”, under the generic Top-Level Domain (“gTLD”) “.com”.
The Complainant confirms that the Disputed Domain Names were registered by the Respondents without its permission and that the Respondents are not licensees of the Complainant. It alleges that the Respondents have been using the Disputed Domain Names to give the impression that the Disputed Domain Names are related to the Complainant and/or to divert customers to websites which contain click-through links for the Respondents’ commercial gain.
The Complainant submits that there is no evidence to suggest that the Respondents: have been commonly known by the Disputed Domain Names; are making, or intend to make, a legitimate noncommercial or fair use of it or have ever used or demonstrated preparations to use it in connection with a bona fide offering of goods or services. It notes that one of the Respondents, namely Elia Tan, has been found by earlier panels to have engaged in the bad faith registration and use of typosquatted domain names over the course of a period of years which span the registrations of the Disputed Domain Names.
The Complainant submits that the Respondents must have known of the Complainant and the Mark when it registered the Disputed Domain Names, as the Mark, according to the Complainant, is recognised and identified as being connected to the Complainant. In addition, the Complainant argues that the Respondents have used the Disputed Domain Names to attempt to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Mark, contrary to the Policy. As such, the Complainant submits that the Disputed Domain Names were registered and are being used in bad faith.
It is also noted by the Complainant that the Respondents have used a privacy service to conceal their identity.
Together, the Complainant submits that the Respondents are using the Disputed Domain Names in bad faith.
The Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
a) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
c) the Disputed Domain Names have been registered and are being used in bad faith.
These criterias are cumulative. The failure of the Complainant to prove any one of these elements means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant is the owner of, and therefore has rights in, the Mark. Section 1.7 of the WIPO Overview 3.0 provides that: “[I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”. Section 1.9 of the WIPO Overview 3.0 further provides that “[a] domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element”.
The Panel therefore finds that the Disputed Domain Names are confusingly similar to the Mark, since the Mark is recognisable within the Disputed Domain Names and they are common, obvious or intentional misspellings of the Mark, comprising the addition of an extra “r” in “rroomstogo” and the addition of an extra “m” is “roommstogo” within the Disputed Domain Names, which are minor differences to the Mark and which do not alter the phonetic or conceptual similarity between the Disputed Domain Names and the Mark. The use of the gTLD “.com” does not prevent a finding of confusing similarity.
Accordingly, the Panel finds that the Disputed Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
Although a complainant is required to demonstrate that a respondent has no rights or legitimate interests in respect of the domain name, as explained in section 2.1 of the WIPO Overview 3.0, the consensus view of previous UDRP panels is that where a complainant establishes a prima facie case that the respondent lacks rights or legitimate interests the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name; the burden of proof always however rests with the complainant. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.
In the current proceeding, the Complainant has established its prima facie case. The Complainant states that it has not given the Respondents permission to use the Mark, in the Disputed Domain Names or otherwise, and submits that the Respondents have not been commonly known by the Disputed Domain Names.
There is no evidence that the Respondents have acquired any common law rights to use the Mark, are commonly known by the Mark or have chosen to use the Mark in the Disputed Domain Names in any descriptive manner, or are making any use of the Disputed Domain Names that would establish rights or legitimate interests as a result of a noncommercial or fair use of either of them.
The Disputed Domain Names appear to redirect Internet users to a website offering PPC links to parties other than the Complainant, which does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use within the meaning of the Policy. Section 2.9 of the WIPO Overview 3.0 states that: “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”. This is relevant here, since the Respondents’ selection of the Disputed Domain Names for their similarity to the Mark is intended to create confusion and to reap commercial gain by trading on the Complainant’s goodwill in the Mark.
By not participating in these proceedings, the Respondents have failed to refute the Complainant’s prima facie case that it has met its burden under the second UDRP element.
As clearly stated in section 2.1 of the WIPO Overview 3.0, “a panel’s assessment will normally be made on the basis of the evidence presented in the complaint and any filed response. The panel may draw inferences from the absence of a response as it considers appropriate, but will weigh all available evidence irrespective of whether a response is filed”. Having reviewed and weighed the available evidence, the Panel finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names.
C. Registered and Used in Bad Faith
The Panel notes that the Mark has already been found by previous UDRP panels to be distinctive and to have a reputation, rather than being a descriptive or generic term.
The Panel also notes that the Disputed Domain Names were registered many years after the Mark was registered and accepts that the Disputed Domain Names were chosen by reference to the Mark.
The Disputed Domain Names are clear examples of typosquatting, that is, a domain name which was chosen with a trade mark owner in mind, usually after the relevant trade marks have been registered, and for the purpose of diverting traffic away from that trade mark owner by capitalizing on Internet users’ typographical mistakes.
As a result, and in the absence of evidence from the Respondents that the similarity of the Disputed Domain Names to the Mark is coincidental, the Panel concludes that the Respondents knew of the Complainant’s rights in the Mark when they registered the Disputed Domain Names.
The Panel therefore finds that the Respondents’ registrations of the Disputed Domain Names were in bad faith since they attempted to appropriate for the Respondents, without the consent or authorisation of the Complainant, rights in the Complainant’s Mark.
The Disputed Domain Names are also being used in bad faith in that they are being used for a commercial purpose that involves redirecting Internet users (in particular those seeking the Complainant) to third parties other than the Complainant.
The Respondents have not sought to explain their registration and use of the Disputed Domain Names, have attempted to conceal their identity, and have not participated in these proceedings. There is moreover no conceivable use of the Disputed Domain Names by the Respondents that would not be illegitimate and therefore there is no basis for the Panel to conclude that the Respondents’ use of the Disputed Domain Names are justified.
Furthermore, while the existence of other UDRP proceedings having been won against one of the Respondents, Elia Tan, does not necessarily create a presumption of bad faith per se, it does support such a finding of bad faith where the Respondents have not taken any steps to rebut it.
Therefore, and on the basis of the information available to it, the Panel finds that the Respondents’ use of the Disputed Domain Names to provide access to sponsored advertising for services is without justification and is inconsistent with the Complainant’s exclusive rights in the Mark. Consideration of these and other factors militates in favour of a finding of bad faith.
The Panel finds that the Respondents have registered and are using the Disputed Domain Names in bad faith.
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, <roommstogo.com> and <rroomstogo.com> be transferred to the Complainant.
Date: December 29, 2021