Complainant is Living Spaces Furniture, LLC of Rancho Cucamonga, California, United States of America, represented by Wood, Herron & Evans, LLP, United States of America.
Respondent is Ukrit Kaewprom of Indianapolis, Indiana, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 15, 2010. On October 15, 2010, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On October 18, 2010, Melbourne IT Ltd. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 27, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 17, 2010.
The Center appointed Sandra Sellers as the sole panelist in this matter on November 29, 2010. 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
Complainant sells furniture and other home furniture accessories.
Complainant holds a U.S. federally registered service mark for LIVING SPACES, for retail furniture and online store services featuring furniture and home furniture accessories. Complainant is also the owner of two pending applications to register LIVING SPACES FURNITURE and design (in color), and LIVING SPACES FURNITURE and design (without color) for the same services.
Each registration or application claims a first use of September 11, 2003.
Complainant also holds the registration for the domain name , which was registered on December 4, 1997, and is actively used.
Respondent holds the registration for the disputed domain name , which was created on March 22, 2008. The disputed domain name resolves to a website depicting furniture and accessories for sale. According to the Complaint, a review of the website shows that Respondent does not sell any furniture itself; it acts as a portal to furniture sold through “”, for which Respondent presumptively earns a commission. 5. Parties’ Contentions A. Complainant
Complainant states that it holds legitimate registrations or applications for LIVING SPACES to sell furniture, that Complainant therefore has rights in the mark, and that Respondent’s use of to sell furniture is confusingly similar.
Complainant alleges that Respondent has no rights or legitimate interests in the mark.
Complainant alleges that Respondent registered and uses the disputed domain name in bad faith. Complainant also alleges that Respondent registered the disputed domain name with actual or constructive knowledge of Complainant’s marks. Respondent registered and using false contact information. The fact that Respondent uses the disputed domain name to sell furniture is evidence of a bad faith attempt to create confusion and drive consumers to buy furniture through Respondent’s website, which shows that Respondent is not making a legitimate noncommercial or fair use of Complainant’s marks. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the UDRP provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant clearly has demonstrated that it has rights in the LIVING SPACES mark, with first use of September 11, 2003. Complainant owns a federal service mark registration for the LIVING SPACES word mark and federal applications for LIVING SPACES and design marks. Based on its use of LIVING SPACES and design, Complainant may also have common law rights in the word mark and design, although in light of its federal registration, the Panel need not make any assessment on this point.
Complainant also is the owner of , which was registered on December 4, 1997. The disputed domain name contains Complainant’s full LIVING SPACES registered mark. Many previous panels have found it is immaterial that Respondent has added a generic term - here “furniture” - to the end of Complainant’s registered mark. Furthermore, addition of the word “furniture” reinforces the association with Complainant’s primary line of products under the LIVING SPACES mark – retail and online sales of furniture - and thus supports a finding that the disputed domain name is confusingly similar, e.g., Caterpillar Inc. v. Roam The Planet, Ltd., WIPO Case No. D2000-0275. Similarly, many previous panels have found that it is immaterial that Respondent has added hyphens to Complainant’s mark, e.g., Rolls Royce PLC v. Hallofpain,WIPO Case No. D2000-1709 (“stating that “[t]he use or absence of punctuation marks, such as hyphens or spaces, does not alter the fact that a domain name is identical to a mark”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered mark, and that Complainant meets the first criterion of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the LIVING SPACES mark. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name. The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that Respondent does not have any rights or legitimate interests in respect of the disputed domain name and that Complainant meets the second criterion of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Complainant has sold furniture and accessories under its LIVING SPACES mark for approximately seven years, and about four years before Respondent registered the disputed domain name. Complainant’s LIVING SPACES registration was issued more than two years before the disputed domain name was registered. Complainant’s domain name also was registered prior to Respondent’s registration of the disputed domain name.
Based on these facts, this Panel infers that Respondent was aware of Complainant’s mark when Respondent registered the disputed domain name. See, e.g., Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574, in which the panel found it “inevitable that Respondent registered the domain names in full knowledge of Complainant’s rights and interests”. Moreover, the use of a domain name confusingly similar to Complainant’s mark and selling the same product supports an inference that Respondent knew of Complainant’s mark before Respondent registered the disputed domain name. Respondent thus registered in bad faith.
The disputed domain name resolves to a website that contains links to “” to purchase furniture that competes with Complainant’s LIVING SPACES furniture. This use is clearly commercial. Respondent’s use of the domain name is an attempt to create confusion to attract Internet users to Respondent’s website for commercial gain. Additionally, in light of this Panel’s finding that the disputed domain name is confusingly similar to Complainant’s mark for the same services, in this Panel’s view it is reasonable to infer that Respondent may have also infringed Complainant's LIVING SPACES mark.
It is now a well-known practice to display on a web page or search engine various links to other commercial websites under a pay-per-click commission scheme: every link activated by an Internet user enables the host of the search engine to collect financial remuneration proportional to the number of connections. See Deutsche Telekom AG v. WWW Enterprise, Inc.,WIPO Case No. D2004-1078. Therefore, in the Panel’s view, it is evident that Respondent has registered and used the disputed domain name with the intent to attract to Respondent’s website Internet users looking for LIVING SPACE furniture, thereby making commercial gain from click-through revenue from the sponsored links.
Given the findings above, it is not necessary for this Panel to determine whether Respondent’s use of allegedly false contact information is further evidence of bad faith.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith, within the meaning of paragraph 4(b)(iv) of the Policy and that Complainant meets the third criterion of paragraph 4(a) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to Complainant.
Sandra A. Sellers
Sole Panelist
Dated: December 13, 2010
Full & Egal Universal Law Academy