WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. dba Pottery Barn Kids v. Ed Domains
Case No. D2004-0640
1. The Parties
The Complainant is Williams-Sonoma, Inc. dba Pottery Barn Kids, of San Francisco, California, United States of America, represented by Deborah Klaus, United States of America.
The Respondent is Ed Domains, of Chapulterec, Morales, Mexico.
2. The Domain Name and Registrar
The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August�16,�2004. On August�16,�2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the domain name at issue. On August�17,�2004, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August�24,�2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September�13,�2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September�13,�2004.
The Center appointed Clive Elliott as the sole panelist in this matter on September�21,�2004. 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 operates over 80 retail stores throughout the United States of America (U.S.) under the POTTERY BARN KIDS service mark and brand concept. Various children’s furniture, bedding and accessories are offered through these stores. POTTERY BARN KIDS is an extension of the Complainant’s POTTERY BARN brand (used in commerce in the United States since about 1956) to the children’s market.
The Complainant owns U.S. Trademark and Service Mark Registration 2,383,910 in international class 35 for the mark POTTERY BARN KIDS. Since 1999, the Complainant’s POTTERY BARN KIDS mark has been used in commerce in the U.S. in connection with the goods and services in the registration. The Complainant sends its POTTERY BARN KIDS catalogs to millions of U.S. homes every month. Annual dollar sales of products under the POTTERY BARN KIDS mark total in the hundreds of millions.
5. Parties’ Contentions
A. Complainant
The Complainant asserts that the POTTERY BARN KIDS mark and the domain name at issue are virtually identical and if one removes the “.com” suffix (a universally recognized generic top level domain), one is left simply with POTTERYBARNKID.
The Complainant notes it has never authorised or licensed any use of the POTTERY BARN KIDS mark by the Respondent. It says that since the POTTERY BARN KIDS mark is unique to the Complainant’s stores and products, and the Complainant has never authorised any use of the mark by the Respondent, the Respondent cannot be said to have legitimately chosen the domain name unless it was seeking to create an impression of an association with the Complainant.
The Complainant asserts that the Respondent’s site offers “sexual erotic poems sexual ethics papers” - clearly products that are not intended for a child-oriented web site - and that when a consumer closes the window on the Respondent’s web site, at least one pop-up window appears offering additional porn. The Complainant believes that the Respondent has never used the POTTERY BARN KID mark or the domain name for the bona fide offering of goods and services that are at all related to “pottery”, “barn” or “kid”.
Similarly, the Complainant is not aware of any evidence demonstrating that the Respondent has ever been commonly known by the mark or domain name.
The Complainant points out that it owns various service mark and trademark registrations for the POTTERY BARN KIDS mark. It submits that the POTTERY BARN KIDS mark is inherently distinctive and as a result of its long and extensive use has acquired distinctiveness among consumers, such that it is one of the more well-known retail store and catalog brands in the US. In light of this, it contends that it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
1. The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain name ; and
3. The domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has provided evidence of trademark registrations for the POTTERY BARN KIDS mark in at least the U.S. It has also provided evidence of the widespread use of the POTTERY BARN KIDS trademark. The Panel concludes that this evidence establishes the Complainant’s rights in the POTTERY BARN KIDS mark for purposes of the Policy.
In the Panel’s view, the addition of a descriptive term to a well-known trademark does little to reduce the confusion with the mark POTTERY BARN KIDS. Accordingly, it is found that is not identical to but extremely similar to Complainant’s mark POTTERY BARN KIDS.
Given the lack of connection in fact between the Complainant and the Respondent, the domain name is likely to confuse and is thus confusingly similar to a trademark or service mark in which the Complainant has rights and is one falling within the contemplation of the Policy, paragraph�4(a)(i).
The ground is made out.
B. Rights or Legitimate Interests
The Complainant asserts that the Respondent is not commonly known by the “Pottery Barn Kids” name and has acquired no trademark or service mark rights in said name. The Panel concludes that the Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy, paragraph 4(a)(ii).
The Complainant asserts that the Respondent’s activities tarnish the Complainant’s POTTERY BARN KIDS mark. In MatchNet plc v. MAC Trading, WIPO Case No.�D2000-0205 (May�11,�2000), it was found that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the complainant’s mark.
A Panel may find that a respondent’s use of the disputed domain name to channel users to a pornographic web site is not a legitimate noncommercial or fair use of the domain name under Policy, paragraph 4(c)(iii). In National Football League Properties, Inc. v. One Sex Entertainment Company, WIPO Case No. D2000-0118 (April�17,�2000), it was found that the respondent had no rights or legitimate interests in the domain names in dispute where the respondent linked these domain names to its pornographic web site.
The Respondent has failed to respond to the allegations of inappropriate linking of the “www.” web site to sites containing erotic or sexual material. The Panel infers that the Complaint is justified. On this basis, it is found that the Respondent clearly has no right or legitimate interest in the domain name. The ground is thus made out.
C. Registered and Used in Bad Faith
The Complainant contends that the Respondent’s commercial use of the domain name shows that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant. It is reasonable to infer (particularly in the face of the Respondent’s silence) that this evidences bad faith registration and use, pursuant to Policy, paragraph 4(b)(iv).
It is also reasonable to infer that the Respondent deliberately connected the domain name to sites containing erotic or sexual material and that this points towards bad faith registration and use under Policy, paragraph 4(a)(iii). In MatchNet plc. v. MAC Trading, WIPO Case No.�D2000-0205 (May�11,�2000), it was found that the association of a confusingly similar domain name with a pornographic web site can constitute bad faith.
The Panel finds that the domain name is obviously connected with the Complainant’s mark, that the Respondent knew this and it is hard to see, on the record as it stands, how its conduct can amount to good faith efforts to use the mark in the course of trade.
Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.
7. Decision
Pursuant to paragraph 4(a) of the Policy, it is found that:
1. the domain name is identical or confusingly similar to the trademark POTTERY BARN KIDS;
2. the Respondent has no rights or legitimate interests in respect of the domain name ; and
3. The domain name was registered and is being used in bad faith.
For all the foregoing reasons, and in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Clive Elliott
Sole Panelist
Date: October�8,�2004
Full & Egal Universal Law Academy