WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Marketing Corp. v. ICS INC / Online Resource, Online Resource Management Ltd. / VMI INC

Case No. D2019-0141

1. The Parties

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

The Respondents are ICS INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / Online Resource, Online Resource Management Ltd. of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom / VMI INC of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom, self-represented.

2. The Domain Names and Registrars

The disputed domain names <romstogokids.com>, <roomsrogo.com>, <roomstogoforkids.com>, and <roomsyogo.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2019. On January 23, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 Respondents and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 7, 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 Respondents of the Complaint, and the proceedings commenced on February 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 5, 2019. On February 13, 2019, one of the Respondents requested an automatic four-day extension of the deadline to file a Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was March 9, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties on March 11, 2019, that it would proceed to panel appointment.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 26, 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.

3.A. Preliminary Matter: Consolidation of Respondents

The Complainant has requested that the disputed domain names and the named Respondents shall be consolidated in a single UDRP proceeding since the disputed domain names are under the control of a single entity, alter-egos of each other, or under common control. The disputed domain names are registered with the same authoritative email address, the same physical address and telephone number. Furthermore, the disputed domain names resolve to very similar websites, featuring the Complainant’s trademarks. In addition, the Complainant has demonstrated that the Respondents have been involved in a number of previous UDRP disputes with adverse decisions against the Respondents.

The consensus view of UDRP panels on the consolidation of multiple domain names and respondents is summarized in paragraph 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), whereby: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Panels have considered a range of factors, typically present in some combination, as useful to determining whether such consolidation is appropriate, such as similarities in or relevant aspects of (i) the registrants’ identity(ies) including pseudonyms, (ii) the registrants’ contact information including email address(es), postal address(es), or phone number(s), including any pattern of irregularities, (iii) relevant IP addresses, name servers, or webhost(s), (iv) the content or layout of websites corresponding to the disputed domain names, (v) the nature of the marks at issue (e.g., where a registrant targets a specific sector), (vi) any naming patterns in the disputed domain names (e.g., <mark-country> or <mark-goods>), (vii) the relevant language/scripts of the disputed domain names particularly where they are the same as the mark(s) at issue, (viii) any changes by the respondent relating to any of the above items following communications regarding the disputed domain name(s), (ix) any evidence of respondent affiliation with respect to the ability to control the disputed domain name(s), (x) any (prior) pattern of similar respondent behavior, or (xi) other arguments made by the complainant and/or disclosures by the respondent(s).”

The Panel concludes that sufficient evidence has been presented in this case to enable the conclusion to be drawn that common control is being exercised over the disputed domain names. Given the above, the Panel determines under paragraph 10(e) of the Rules that consolidation of the Respondents is procedurally efficient and equitable to the Parties, is consistent with the Policy and Rules, and in conformity with prior relevant UDRP decisions in respect of this issue.

4. Factual Background

The Complainant has submitted evidence that it is the owner of the following trademark registrations:

US Trademark ROOMS TO GO with registration number 1,756,239 and registration date March 2, 1993.

US Trademark ROOMS TO GO with registration number 1,801,702 and registration date October 26, 1993.

US Trademark ROOMS TO GO with registration number 2,396,055 and registration date October 17, 2000.

US Trademark ROOMS TO GO with registration number 3,587,032 and registration date March 10, 2009.

US Trademark ROOMS TO GO KIDS with registration number 4,756,048 and registration date June 16, 2015.

US Trademark ROOMS TO GO KIDS TEENS with registration number 4,751,456 and registration date June 9, 2015.

The disputed domain name <romstogokids.com> was registered on March 6, 2008.

The disputed domain name <roomsrogo.com> was registered on November 16, 2011.

The disputed domain name <roomsyogo.com> was registered on January 27, 2013.

The disputed domain name <roomstogoforkids.com> was registered on February 1, 2016.

5. Parties’ Contentions

A. Complainant

The Complainant was founded in 1991 and, through its licensees, it operates retail furniture stores and sells furniture under its trademarks ROOMS TO GO and ROOMS TO GO KIDS, throughout the US, and on the Internet through its various websites. The Complainant’s domain names <roomstogo.com> and <roomstogokids.com> have been registered since 1996.

Since its inception, the Complainant has invested millions of dollars and other resources in developing the reputation and goodwill of its ROOMS TO GO family of marks, such that the public recognizes and easily identifies these marks and the Complainant with quality furniture and retail furniture stores, including kids’ furniture. The Complainant has enjoyed tremendous success as a result of its efforts, and has been ranked among the top five furniture store chains in the US for nearly 20 years, holding the top spot for several years in the 2000s and currently ranked number five.

The Complainant has had more than USD 1 billion in annual sales since 2000, with recently estimated annual sales of USD 2.35 billion and more than 140 showrooms. In 2011, the Complainant had approximately 125 stores operated by the Complainant’s licensees and franchisees. The estimated sales were USD 1.5 billion and the Complainant was ranked the number three furniture store retailer in the US by Furniture Today Magazine.

The disputed domain names <roomsrogo.com>, <roomsyogo.com>, <romstogokids.com>, and <roomstogoforkids.com> were registered by the Respondents and are used to divert Internet traffic from the Complainant’s official websites. The Respondents use the disputed domain names for click-through advertising websites comprised of parked pages with click-through links to various third-party websites for furniture and/or home décor and using furniture related terms or descriptions for the link descriptions.

Furthermore, the Respondents are known, adjudicated serial cybersquatters with more than 80 adverse UDRP decisions against ICS INC./ORM Ltd. (including a recent decision involving the Complainant), and at least 5 against VMI INC.

The numerous adverse UDRP decisions against ICS INC./ORM Ltd. show that the Respondents’ modus operandi is to: (1) hide their true identity through anonymous domain name registration services; (2) register domain names incorporating or typosquatting on well-known trademarks of others; (3) trade-off the goodwill of those marks for commercial gain by redirecting Internet traffic to pay-per-click (“PPC”) sites or to third-party websites; and (4) refuse to participate when the rightful trademark owners bring UDRP actions.

The adverse UDRP decisions against VMI INC. show it employs a similar modus operandi, which is to: (1) hide its true identity through anonymous domain registration services or by providing meaningless contact information; 2) register domain names incorporating the registered trademarks of others; (3) trade-off the goodwill of those marks for commercial gain by redirecting Internet traffic to PPC sites or other websites; and (4) refuse to participate when the rightful trademark owners bring UDRP actions. Notably, the disputed domain names are not the first cybersquatting domains ICS INC./ORM Ltd. have used to target the Complainant and unlawfully trade-off the Complainant’s marks and goodwill.

The Respondents have previously targeted the Complainant by cybersquatting on its registered trademarks. See Artemis Marketing Corp. v. ICS, INC., ORM LTD., WIPO Case No. D2018-1590, where the domain names <oomstogo.com>, <roomatogo.com>, <roomstgo.com>, <roomstogopr.com>, <room2go.com>, and <roonstogo.com> were transferred to the Complainant.

All four of the disputed domain names were registered after the Complainant’s ROOMS TO GO trademark registrations. The disputed domain names are confusingly similar, if not identical, to the ROOMS TO GO trademarks because they either incorporate the Complainant’s marks in their entirety or are an intentional misspelling by a few characters.

The disputed domain name <roomstogoforkids.com> incorporates the Complainant’s trademarks ROOMS TO GO and ROOMS TO GO KIDS in their entirety and is therefore confusingly similar, if not identical, because the phrase “for” cannot distinguish the disputed domain name from the trademarks.

The disputed domain names <roomsrogo.com>, <roomsyogo.com>, and <romstogokids.com> are confusingly similar and nearly identical, to the Complainant’s ROOMS TO GO trademarks. These domains are common misspellings of the ROOMS TO GO trademarks. Two of these disputed domain names differ from the Complainant’s trademarks by a single letter: changing the “t” in “to” to “r” and “y”, respectively. The disputed domain name <romstogokids.com> is an intentional misspelling of the Complainant’s ROOMS TO GO KIDS trademark that differs by a single letter: omitting an “o” from “rooms”. The altering of one or just a few characters is the very nature of typosquatting.

The Respondents have no intellectual property rights in or to the disputed domain names. The Respondents are not associated with the Complainant and are not licensed or otherwise authorized to use the Complainant’s trademarks in the disputed domain names. The Respondents have no means to establish that they are or have ever been commonly known as “Rooms To Go” or any variation thereof. The Respondents are known as ICS INC., ORM Ltd., and/or VMI INC., and none of the websites to which the disputed domain names resolve identifies a person or entity legitimately known as “Rooms To Go”. The disputed domain names are used for click-through advertising links for furniture or home décor and sub-links to the Complainant’s competitors. The Respondents’ generation of advertising revenues relies on the disputed domain names that are identical or similar to the Complainant’s trademarks in order to divert customers looking for the Complainant and its goods and services. For the foregoing reasons, the Complainant has made far more than the minimum required prima facie showing that the Respondents have no rights or legitimate interests to any of the disputed domain names.

The Respondents’ bad faith registration and use of the disputed domain names <roomsrogo.com>, <roomsyogo.com>, <romstogokids.com>, and <roomstogoforkids.com> is shown by the Respondents’ use of parking pages which contain furniture-related click-through advertising links, including links to competing furniture and home décor businesses. The disputed domain names are used to attract Internet users who misspell the Complainant’s trademarks and direct them to the Complainant’s competitors’ websites. It is well established that where a domain name is used to generate revenue in respect of click-through traffic, and that traffic has been attracted because of the name’s association with the complainant, such use amounts to use in bad faith.

The Respondents’ bad faith registration and use of the disputed domain name <roomstogoforkids.com> is further demonstrated by the explicit offer to sell the disputed domain name for USD 299 on the website to which <roomstogoforkids.com> resolves.

B. Respondent

The Respondents did not submit any formal response.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondents have no rights or legitimate interests in the disputed domain names; and

(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademarks ROOMS TO GO, ROOMS TO GO KIDS and ROOMS TO GO KIDS TEENS. Under the confusingly similarity test, it is standard practice to disregard the generic Top-Level Domain (“gTLD”) except in cases where the applicable gTLD may itself form part of the relevant trademark.

The disputed domain name <roomsrogo.com> consists of the trademark ROOMS TO GO with the letter “t” being replaced by the letter “r”.

The disputed domain name <roomsyogo.com> consists of the trademark ROOMS TO GO with the letter “t” being replaced by the letter “y”.

The Panel notes that the letters “r”, “t” and “y” are placed next to each other on a typical “qwerty” keyboard, meaning that a single slip of the finger by an Internet user searching for the Complainant may result in an unwanted visit to the Respondents’ website instead.

The disputed domain name <romstogokids.com> differs from the trademark ROOMS TO GO KIDS by a single letter “o” that is left out in the word “room”. Furthermore, the disputed domain name incorporates the trademark ROOMS TO GO in the entirety except for the left out letter “o” in the word “room”.

The disputed domain name <roomstogoforkids.com> incorporates the Complainant’s trademark ROOMS TO GO KIDS in its entirety with the addition of the descriptive term “for”. The mere addition of the descriptive term to the trademark does not eliminate the confusing similarity between the Complainant’s trademark and the disputed domain name. In addition, the disputed domain name incorporates the trademark ROOMS TO GO in the entirety.

Having the above in mind, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademarks and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondents have no rights or legitimate interests with respect to the disputed domain names. The Respondents may establish a right or legitimate interest in the disputed domain names by demonstrating any of the following non-exhaustive circumstances listed in paragraph 4(c) of the Policy:

(a) that they have made preparations to use the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services prior to any notice of the dispute; or

(b) that they are commonly known by the disputed domain names, even if they have not acquired any trademark rights; or

(c) that they are making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Complainant’s trademark registrations for ROOMS TO GO predate the Respondents’ registrations of the disputed domain names, which are confusingly similar to the Complainant’s trademarks. The Complainant has not licensed or otherwise consented to the Respondents’ use of any of the trademarks in connection with the disputed domain names. There is no evidence in the case indicating that the Respondents have made preparations to use the disputed domain names in connection with a bona fide offering of goods or services prior to the dispute.

The Respondents have not submitted any evidence in this case to demonstrate that the Respondents are the owners of any trademark rights similar to the disputed domain names or that the Respondents are or have been commonly known by the disputed domain names.

Furthermore, there is no evidence in the case file indicating that the Respondents are making a legitimate, noncommercial or fair use of the disputed domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. On the contrary, the submitted evidence indicates that the disputed domain names are used for commercial parking pages containing click-through advertising links leading to competitors of the Complainant. Although given the opportunity, the Respondents have not rebutted the Complainant’s prima facie case.

By not submitting a formal response, the Respondents have failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain names. Thus, there is no evidence in the case record that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use includes without limitation:

(i) circumstances indicating the disputed domain names were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain names; or

(ii) the disputed domain names were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) the disputed domain names were registered primarily for the purpose of disrupting the business of a competitor; or

(iv) the disputed domain names have intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant has demonstrated that the Respondents have engaged in a pattern of registering and using domain names that incorporate or misspell third party trademarks, including the Complainant’s trademarks. See for example Artemis Marketing Corp. v. ICS INC., ORM LTD, supra, where the domain names <oomstogo.com>, <roomatogo.com>, <roomstgo.com>, <roomstogopr.com>, <room2go.com>, and <roonstogo.com> were transferred from the Respondents to the Complainant.

Given the circumstances and the submitted evidence in the case, the Panel finds it unlikely that the Respondents did not have the Complainant in mind when registering and using the disputed domain names <roomsrogo.com>, <roomsyogo.com>, <roomstogoforkids.com>, and <romstogokids.com>. The Respondents knew or should have known of the existence of the Complainant and its trademarks ROOMS TO GO and ROOMS TO GO KIDS when registering and using the disputed domain names.

The circumstance that the Respondents’ websites, to which the disputed domain names resolve, contain sponsored click-through advertising links leading to competitors of the Complainant, indicates that the disputed domain names have intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the websites as described under 4(b)(iv) of the Policy.

There is no evidence in the case file that refutes the Complainant’s submissions.

The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain names <roomsrogo.com>, <roomsyogo.com>, <roomstogoforkids.com> and <romstogokids.com> have been registered and used in bad faith.

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 <romstogokids.com>, <roomsrogo.com>, <roomstogoforkids.com>, and <roomsyogo.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: April 8, 2019