Complainant is Williams-Sonoma, Inc., United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
Respondent is Super Privacy Service LTD c/o Dynadot, United States of America (“United States”) 2. The Domain Name and Registrar
The disputed domain name Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 11, 2019. On October 11, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2019, the Registrar 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 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 October 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 8, 2019. The Center appointed Phillip V. Marano as the sole panelist in this matter on November 21, 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 Complainant is a premier specialty retailer of home products (including kitchenware, appliances, gourmet food, and décor) that sells products internationally through retail stores, catalogs, and the Internet, including through its Respondent registered the disputed domain name on June 27, 2019. At the time of the submission of the Complaint, the disputed domain name resolved to a website powered by the Registrar advertising that the disputed domain name is “available for sale” and encouraging visitors to “BUY NOW” for USD 990.00. 5. Parties’ Contentions A. Complainant Complainant asserts ownership of the above registered trademark rights in the WILLIAMS-SONOMA and WILLIAMS SONOMA SIGNATURE trademarks and added copies of corresponding trademark registrations and applications from the United States. The disputed domain name is identical to Complainant’s WILLIAMS SONOMA SIGNATURE trademark, and confusingly similar to Complainant’s WILLIAMS-SONOMA trademark, according to Complainant, because the former is a verbatim reproduction, and the latter adds the term “signature” and drops the hyphen. Complainant further asserts that Respondent lacks any rights or legitimate interests in the disputed domain name based on: the fact Complainant has never authorized Respondent to use any of its trademarks; the lack of any evidence that Respondent is known by the disputed domain name; Respondent’s offer to sell the disputed domain name, which does not constitute a noncommercial fair use or a bona fide offering of any goods or services. Complainant argues that Respondent has registered and used the disputed domain name in bad faith for a couple reasons, namely that: Respondent had either actual or constructive knowledge of Complainant’s WILLIAMS-SONOMA and WILLIAMS SONOMA SIGNATURE trademarks because they are extraordinarily well-known and have enjoyed such status for many years; and Respondent registered the disputed domain name for the purposes of selling it based on Respondent’s open sales offer for USD 990, which is well in excess of its out-of-pocket costs for the disputed domain name. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings In order to succeed in its Complaint, Complainant must establish in accordance with paragraph 4(a) of the Policy: i. The disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights; ii. 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. Although Respondent did not reply to Complainant’s contentions, the burden remains with Complainant to establish by a balance of probabilities, or a preponderance of the evidence, all three elements of paragraph 4(a) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.3 (“A respondent’s default would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. Panels have been prepared to draw certain inferences in light of the particular facts and circumstances of the case, e.g. where a particular conclusion is prima facie obvious, where an explanation by the respondent is called for but is not forthcoming, or where no other plausible conclusion is apparent.”); The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“The Respondent’s default does not automatically result in a decision in favor of the complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a)”). A. Identical or Confusingly Similar Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint. WIPO Overview 3.0, Section 1.2.1. Complainant submitted evidence that the WILLIAMS-SONOMA trademark has been registered in the United States with priority dating back to 1956, nearly sixty-three years before the disputed domain name was registered by Respondent. In addition, Complainant submitted evidence that the WILLIAMS SONOMA SIGNATURE trademark was applied for in the United States with earliest priority dating back to December 2015. Pending trademark applications alone do not generally establish trademark rights within the meaning of paragraph 4(a)(i) of the Policy, because they have not yet been approved or matured into registrations. WIPO Overview 3.0, Section 1.1.4. Thus, the Panel finds that Complainant’s rights in the WILLIAMS-SONOMA trademark has been established pursuant to the first element of the Policy. The only remaining question under the first element of the Policy is whether the disputed domain name is identical or confusingly similar to Complainant’s WILLIAMS-SONOMA or trademark. In this Complaint, the disputed domain name is confusingly similar to Complainant’s WILLIAMS-SONOMA trademark because, disregarding the hyphenated punctuation and the generic Top-Level Domains (“gTLD”), “.com” the trademark is wholly contained in its entirety within the disputed domain name, or identical to the disputed domain name. WIPO Overview 3.0, Section 1.7. (“This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name … [I]n cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar...”). The gTLDs such as “.com” in the disputed domain name, are generally viewed as a standard registration requirement and are disregarded under the first element. WIPO Overview 3.0, Section 1.11. It is well established that neither the mere addition or removal of a hyphen is sufficient to dispel confusing similarity. See Chernow Comm’ns, Inc. v. Kimball,WIPO Case No. D2000-0119 (May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark”). In view of Complainant’s registration for the WILLIAMS-SONOMA trademark, as well as Respondent’s incorporation of this trademark in its entirety in the disputed domain name, the Panel concludes that Complainant has established the first element of the Policy. B. Rights or Legitimate Interests Complainant must make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name, shifting the burden of production on this element to Respondent to come forward with evidence demonstrating such rights or legitimate interests. Where, as in this Complaint, Respondent fails to come forward with any relevant evidence, Complainant is deemed to have satisfied the second element of the Policy. WIPO Overview 3.0, Section 2.1. To that end, it is evident that Respondent, identified by registration data for the disputed domain name only as Super Privacy Service LTD, is not commonly known by the disputed domain name or Complainant’s WILLIAMS-SONOMA trademark. Based on the undisputed facts and circumstances in the record, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. This is especially the case where a disputed domain name is so obviously connected with a complainant and its products, its very use by a registrant who has no connection to the complainant suggests opportunistic bad faith registration and use of that domain name. Accordingly, the Panel concludes from the record that Respondent had Complainant’s WILLIAMS-SONOMA trademark in mind when registering the disputed domain name, and that Respondent most likely registered domain names in order exploit and profit from Complainant’s trademark rights through the creation of a risk of implied affiliation. WIPO Overview 3.0, Section 2.5.1. In view of the absence of any evidence supporting any rights or legitimate interests in the disputed domain name, plus Respondent’s attempt to sell the disputed domain name in opportunistic bad faith, the Panel concludes that Complainant has established the second element of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy proscribes the following non-exhaustive circumstances as evidence of bad faith registration and use of the disputed domain name: i. Circumstances indicating that Respondent has registered or Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark to a competitor of Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or ii. Respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or iiii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or iv. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. Respondent’s registration of the disputed domain name with intent to exploit Complainant’s trademark and sell that domain name for what appears to be a profit constitutes axiomatic bad faith registration and use under paragraph 4(b)(i) of the Policy. Respondent’s bad faith is evident where Respondent clearly has knowledge of Complainant’s WILLIAMS-SONOMA trademark and WILLIAMS SONOMA SIGNATURE application, the trademark is well-known and well predate registration of the disputed domain name, and Respondent (through the Registrar) placed offers to sell the disputed domain name to the general public. See WIPO Overview 3.0, Section 3.1.1. Specifically, Respondent made an open offer to sell the disputed domain name for USD 990. This is far in excess of any apparent registration costs and falls well within paragraph 4(b)(i) of the Policy. Respondent’s offer at this price is clear evidence of an opportunistic bad faith intention to acquire and sell a domain name that is functionally identical to Complainant’s WILLLIAMS SONOMA SIGNATURE application for a trademark. In view of Respondent’s attempts to sell the disputed domain name in what appears to be likely in excess of Respondent’s out-of-pocket costs, the Panel concludes that Complainant has established the third element of the Policy. 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, Phillip V. Marano
Sole Panelist
Date: December 3, 2019
Full & Egal Universal Law Academy