The Complainant is Wayfair LLC of Boston, Massachusetts, United States of America (“United States”), internally represented.
The Respondent is Curtis Williams of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”). 2. The Domain Name and Registrar
The disputed domain name is registered with Key-Systems GmbH dba (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, the Registrar transmitted by email to the Center its verification response confirming:
(a) it is the Registrar for the disputed domain name;
(b) registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint;
(c) the current Respondent registered the disputed domain name on April 19, 2011;
(d) the language of the registration agreement is English;
(e) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.
On September 24, 2018, the Center sent an email communication to the Complainant providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. Later that day, the Complainant filed an amended Complaint.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 25, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 15, 2018. A third party sent an email communication to the Center on October 2, 2018. The Center notified the Parties that it would proceed to panel appointment on October 16, 2018. A third party sent an email communication to the Center on October 17, 2018.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on October 26, 2018. 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 is an e-commerce business providing online retail services for a wide range of goods. It was established in 2011.
On February 28, 2011, it filed an application to register WAYFAIR as a trademark in the United States, Trademark No. 4,143,919, in respect of the relevant services in International Class 35. That trademark was registered on May 15, 2012, commenced carrying on business in Boston in the United States on September 1, 2011. The trademark was subsequently registered in the United Kingdom on January 6, 2012 (Trademark No. 2595322) and as a European Union Trademark on September 5, 2013 (Trademark No. 11730579).
According to the Complaint, the Complainant has been using the trademark WAYFAIR continuously since its first use in commerce in the United States on September 1, 2011.
As noted above, the Registrar confirms that the disputed domain name was registered in the current Respondent’s name on April 19, 2011.
In July 2018, the disputed domain name resolved to a parking page with pay-per-click (PPC) advertisements for furniture and furnishings, products which the Complainant offers for sale through its websites. The website also solicited invitations to “Buy this domain”. According to the Complaint, the disputed domain name has resolved to a website of this nature since November 27, 2012.
When a representative of the Complainant approached the Respondent in May 2018 with an offer to purchase it for USD500, a response was elicited from a Mr Koperwas that the disputed domain name was not for sale - nothwithstanding the invitation on the website to “Buy this domain”.
At some point after July 2018, however, the disputed domain name was redirected to the website of a Foundation. Emails from the CEO of the Foundation have confirmed that the disputed domain name is not held by, or in any way associated with, the Foundation. 5. Discussion and Findings
No Response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present his case.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademarks for WAYFAIR.
The second stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to the proven trademarks. In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-Level Domain (“gTLD”) component as a functional aspect of the domain name system: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Questions such as the scope of the trademark rights, the geographical location of the respective parties and other considerations that may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
The disputed domain name differs from the Complainant’s trademark by the addition of the gTLD “.com” and the letter “s” at the end of the Complainant’s trademark.
Disregarding the “.com” gTLD, the disputed domain name differs from the Complainant’s trademark by the omission of the letter “f”. Minor differences of this nature have long been recognised as confusingly similar under the Policy as an obvious misspelling. See WIPO Overview 3.0, section 1.9.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademark and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., WIPO Overview 3.0, section 2.1.
It is clear from the Complaint that the Respondent is not authorised by the Complainant or associated with the Complainant in any way. On the contrary, the Complainant contends that the Respondent is illegitimately trying to divert consumers from the Complainant’s websites to competing business. The disputed domain name is not derived from the Respondent’s name.
The use of a confusingly similar domain name to attract users of the internet to PPC advertisements in competition with the Complainant’s trademark does not qualify as a good faith offering of goods or services under the Policy. See e.g. WIPO Overview 3.0, section 2.9.
The Respondent has not sought to rebut the Complainant’s allegations or otherwise justify his or its registration of the disputed domain name.
In these circumstances, the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not sought to rebut that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd,WIPO Case No. D2010-0470.
Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.
The Complainant contends that the Respondent registered and is using its confusingly similar disputed domain name to attract internet users to the Respondent’s website for commercial benefit and to the detriment of the Complainant’s trademark.
It follows from the conclusions reached in section 5B above that the Respondent is using the disputed domain name in bad faith. The disclaimer on his website that the advertisements are arranged by a third party service provider do not absolve the Respondent in this context as it is the Respondent’s responsibility to control the use made of his disputed domain name.
The Panel notes that the disputed domain name was registered before the Complainant’s trademark in the United States was registered. However, the disputed domain name was registered after the application to register the trademark was filed.
The disputed domain name was registered only several weeks after the trademark application was filed and before the Complainant commenced retail sales. It is not clear what relationship if any there is between Mr. Koperwas and the Respondent. Nor is it clear whether either has had any association or involvement with the Complainant.
Against that consideration, while the disputed domain name does consist of two ordinary English words, they are not words which naturally go together in the way formed by the disputed domain name. Nor do they have any descriptive meaning in combination. It is likely that the Complainant’s trademark application was published. Further, on the record in this proceeding, it appears that the Respondent has been using the disputed domain name to misleading divert potential customers to his PPC website from very early in the piece. Moreover, the Respondent has not come forward to provide a defence or otherwise explain his adoption of the disputed domain name in the face of the Complainant’s allegations. Having regard to all these matters, on the record in this administrative proceeding, the Panel finds on balance that the Complainant has established that the disputed domain name has been registered and used in bad faith under the Policy. 6. 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 name, , be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: November 8, 2018
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