Complainant is ROSET USA CORPORATION of New York City, New York, United States of America (“United States”) (“Complainant No. 1”) and ROSET S.A. of Briord, France (“Complainant No. 2”), represented by Shwal & Platt, United States.
Respondent is Paul Lum of Richmond, British Columbia, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 12, 2018. On November 13, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 14, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center on November 14, 2018, that the Complaint was administratively deficient, Complainants filed an amendment to the Complaint on November 14, 2018.
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 Respondent of the Complaint, and the proceedings commenced on November 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 6, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on December 12, 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
Complainant No. 1 is a company under the laws of the United States while Complainant No. 2 is organized under the laws of France. Complainants both belong to the ROSET group of companies which is active in the furniture industry, including the production and selling of sofas worldwide.
Complainants have provided evidence that they are the registered owners of numerous trademarks relating to the designation “Togo”, including, inter alia, the following trademark registered for Complainant No. 1 with protection for the territory of the United States:
United States word mark TOGO, United States Patent and Trademark Office (USPTO), Registration No. 3715041, Registration Date: November 24, 2009, Status: Active.
Respondent, who according to the WhoIs information for the disputed domain name is domiciled both in the United States and in Canada, registered the disputed domain name on April 3, 2017. As of the time of the rendering of this Decision, the disputed domain name resolves to a website at “www.” with contact information for the United States as well as for Canada which promotes the online selling of sofas branded “TOGO”.
Complainants contacted Respondent by means of a cease and desist letter from their legal representatives dated October 1, 2018, sent by email as well as via postal mail to the contact information available from the website under the disputed domain name, to which Respondent apparently did not reply.
Complainants request that the disputed domain name be transferred to them. 5. Parties’ Contentions A. Complainants
Complainants contend that they are both lawful commercial users of the TOGO trademark which has been first used in 1972 when the award winning line of furniture named TOGO was designed for the ROSET group of companies and subsequently protected in part as a design in the United States. Annual catalogues of Complainants’ products including the TOGO product line were distributed in the United States, e.g. from 2009 to 2014 in large numbers of 31,000 through 34,700, and Complainants, moreover, regularly invested significant advertising expenditures in the United States and in Canada to promote their TOGO brand.
Complainants submit that the disputed domain name is confusingly similar to Complainants’ TOGO trademark as they both begin with the word “Togo” to which Respondent has simply affixed the highly descriptive word “sofa”.
Moreover, Complainants assert that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) there is literally nothing about the word “Togo” that might legitimately be deemed to describe or denominate a sofa, let alone one of Complainants’ designs, (2) Respondent obviously is aware of the likelihood of confusion between the disputed domain name and Complainant’s TOGO trademark as Respondent’s website under the disputed domain name contains a small disclaimer to be found under the “About us” subpage that says: “Please note that this is not the TOGO, nor is it manufactured by or affiliated with LIGNE ROSET” and (3) authentic TOGO brand furniture is regularly available only to resellers by purchase from Complainants and Respondent obviously is not one of Complainants’ customers nor does Respondent have lawful access to commercial quantities of authentic TOGO brand furniture.
Finally, Complainants argue that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent did not reply to Complainants’ cease and desist letter dated October 1, 2018 and (2) Respondent, by using the disputed domain name, intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainants’ TOGO trademark. B. Respondent
Respondent did not reply to Complainants’ contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainants carry the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent's default in the case at hand does not automatically result in a decision in favor of Complainants, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
As a procedural comment, Complainants, belonging to the same group of companies, both enjoy rights in a variety of TOGO trademarks and, therefore, have a specific common grievance against Respondent and thus it is appropriate in the case at hand and in line with UDRP panelists’ consensus to accept this Complaint filed by multiple complainants against a single respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1).
Having said so, the Panel comes to the following decision: A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name is confusingly similar to the TOGO trademark in which Complainants have rights.
The disputed domain name incorporates the TOGO trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panelists (see WIPO Overview 3.0, section 1.8) that the addition of dictionary term to a trademark in a domain name is normally insufficient, in and of itself, to avoid the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the dictionary term “sofa”, which even refers to a major product among Complainants’ product line, does not dispel the confusing similarity arising from the incorporation of Complainants’ TOGO trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainants’ undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has neither been granted a license nor has it been otherwise authorized by Complainants to use their TOGO trademark, either as domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Togo” on its own. Finally, Respondent apparently has not used the disputed domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair purpose. On the contrary, Respondent apparently redirects the disputed domain name to a website at “www.” which promotes sofas for online sale that are highly similar to those belonging to Complainants’ product line and which are being protected as a design in the United States. While UDRP panels generally recognize that resellers using a domain name containing the complainant’s trademark to undertake sales related to the complainant’s goods or services may be making a bona fide offering of goods or services and, thus, have a legitimate interest in such domain name, the site under the disputed domain name then must e.g., actually be offering the goods or services at issue, use the website to sell only the trademarked goods or services and accurately and prominently disclose the registrant’s relationship with the trademark holder (the so-called “OKI data test”, see WIPO Overview 3.0, section 3.8). In the case at hand, Respondent, however, obviously neither sells authentic TOGO sofas and nor does its website prominently disclose Respondent’s relationship with Complainants, but merely indicates in a small footnote to be found under the “About us” subpage that the goods sold under the disputed domain name are not official TOGO products and were not manufactured by Complainants.
Accordingly, Complainants have established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainants have also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy. C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The redirection of the disputed domain name, which is confusingly similar to Complainants’ TOGO trademark, to a website at “www.” which apparently sells sofas called “TOGO” which have not been manufactured by Complainants and seem to violate their design trademark due to a likelihood of confusion between Respondent’s sofas and those of Complainants, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with Complainants’ TOGO trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. Such circumstances are evidence of registration and making use of the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that Complainants have also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii). 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 name be transferred to Complainants.
Stephanie G. Hartung
Sole Panelist
Date: December 20, 2018
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