The Complainants are Roset USA Corporation, United States of America (the “United States”), and Rose S.A., France, represented by Shwal & Platt, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Paul Lum, Canada. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 31, 2019. On July 31, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 6, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 9, 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 Respondent of the Complaint, and the proceedings commenced on August 13, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 2, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 3, 2019.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on September 18, 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. 4. Factual Background
The Complainants, Roset USA Corporation (“First Complainant”) and Roset S.A. (“Second Complainant”) are under common ownership and control, as a part of Groupe Roset S.A, which designs, manufactures, and distributes modern furniture under the name of “Ligne Roset”.
The first Complainant is a company under the laws of the United States while the Second Complainant is organized under the laws of France.
The First Complainant is the owner of trademark TOGO, Registration No. 3715041, registered before the States Patent and Trademark Office (“USPTO”) on November 24, 2009. Whereas, the Second Complainant is the owner of several trademark registrations in various jurisdictions outside the United States.
Michek Ducaroy, a French designer designed for the Complainant the line designation TOGO in 1972. In addition, the TOGO design was subject to French Design Deposit No. 112,398.
The Disputed Domain Name was registered in April 2, 2019. The Disputed Domain Name resolves to a website which displays and offers for sale numerous sofas of Complainant’s design. 5. Parties’ Contentions A. Complainant
The Complainant’s contentions can be summarized as follows:
Identical or confusingly similar
The Complainants allege that the Disputed Domain Name is similar to the TOGO trademark, since the Disputed Domain Name reproduces identically and in entirety the TOGO trademark with the addition of the descriptive term “livings”, falsely suggesting to Internet users that the Respondents website is either part of the same business as Complainants or endorsed by the Complainants.
Rights or legitimate interests
The Complainants state that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainants further allege that there is nothing about the word “TOGO” that might legitimately be deemed to describe or denominate a sofa.
In addition the Respondent is aware of the likelihood of confusion with the Disputed Domain Name since the Respondent’s website contains in “About us” a disclaimer stating the following “Please note that this page is not the Togo, nor is it manufactured by or affiliated with Ligne Roset”.
Furthermore, the Complainants have not licensed or authorized the Respondent to use the TOGO trademark.
Finally, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. Registration and use in bad faith
The Complainants state that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Respondent website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent website. B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings 6.1. Preliminary Matter: Multiple Complainants
In the present case, the Complainants are under common ownership and control. In addition, both of them are lawful commercial users of the TOGO trademark. Consequently, they have a specific common complaint against the Respondent.
Therefore, the Panel accepts this Complaint to be 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). 6.2. Substantive Matters
Paragraph 4(a) of the Policy lists the three elements which the Complainants must satisfy with respect to the Disputed Domain Name in this case:
(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
Based on the evidence submitted, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s TOGO trademark. The Disputed Domain Name wholly incorporates the Complainant’s trademark and is its only distinctive element.
Furthermore, the Disputed Domain Name contains the addition of the term “livings” which does not prevent a finding of confusing similarity.
Therefore, the Panel concludes that the Complainants have satisfied the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the Disputed Domain Name:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service at issue.”
There is no evidence of the existence of any of those rights or legitimate interests. The Complainants have not authorized, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the trademark in the Disputed Domain Name. The Complainants have prior rights in the trademark, which precede the Respondent’s registration of the Disputed Domain Name.
In addition, the Respondent uses the Disputed Domain Name to offer sofas that are identical to the Complainants’ TOGO design trademark. Thus, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name.
The Respondent has failed to show that it has acquired any rights or legitimate interests with respect to the Disputed Domain Name.
Moreover, the Panel also notes that the Disputed Domain Name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1.
As such the Panel finds that the Complainants have satisfied the second requirement of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainants must establish that the Respondent registered and subsequently used the Disputed Domain Name in bad faith.
The Disputed Domain Name was registered on April 2, 2019, while the First Complainant’s trademark TOGO was granted in November 2009 by the USPTO and the TOGO design line was registered in the United States in 1977. This is 10 years after the First Complainant registered its trademark.
The fact the Disputed Domain Name fully incorporates the Complainants’ trademark is clear evidence that the Respondent was well aware of the Complainants’ trademark at the time it proceeded with the registration of the Disputed Domain Name. In addition, the Disputed Domain Name is comprised of the TOGO trademark with the term “livings”, which is related to the Complainants’ business.
Moreover, the Panel was able to verify that the Respondent had created a website which offers sofas of the Complainants’ design. Furthermore, in the section “About us” the Respondent mentions the following disclaimer: “Please note that this is not the Togo, nor is it manufactured by or affiliated with Ligne Roset”. This clearly shows that the Respondent was well aware of the Complainants’ trademark at the time it proceeded with the registration of the Disputed Domain Name, and that the Respondent registered and used the Disputed Domain Name in bad faith. The Panel finds that the overall circumstances of the case point to the Respondent’s bad faith; accordingly, the mere existence of the disclaimer cannot cure such bad faith. See WIPO Overview 3.0, section 3.7. Moreover, as previously mentioned, the Disputed Domain Name carries a risk of implied affiliation.
The Panel is of the view that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its own website by creating a likelihood of confusion with the Complainants’ TOGO trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. Such circumstances are evidence of registration and use of the Disputed Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In addition, the fact that the Respondent uses a privacy registration service in order to hide its real identity enhances the bad faith of the Respondent (see Fifth Third Bancorp v. Secure Whois Information Service,WIPO Case No. D2006-0696). What is more, the Respondent has been involved in a previous domain name dispute with the Complainants for the domain name . (See Roset USA Corporation and Roset S.A. v. Paul Lum,WIPO Case No. D2018-2579).The decision found that the Respondent acted in bad faith and ordered the transfer of the disputed domain name to the Complainants.
Therefore, taking all the circumstances into account and for all the above reasons, the Panel concludes that the Respondent has registered and used the Disputed Domain Name 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 Name, , be transferred to the Complainants.
Pablo A. Palazzi
Sole Panelist
Date: October 2, 2019
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