Complainant is Artemis Marketing Corp., United States of America (“United States” or “U.S.”), represented by Bryan Cave Leighton Paisner, United States.
Respondent is Domain Administrator, PrivacyGuardian.org, United States / DPLiqGr, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2021. On September 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 24, 2021, 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 Complainant on September 28, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 29, 2021.
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 October 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 27, 2021.
The Center appointed Scott R. Austin as the sole panelist in this matter on November 16, 2021. 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 BackgroundComplainant states in its Complaint and provides evidence in the respective Annexes sufficient to support that Complainant operates through its licensees retail furniture stores and sells furniture in the United States under the trademarks and service marks ROOMS TO GO (collectively, the “ROOMS TO GO Mark”), and on the Internet through its related websites. Since its founding in 1991, Complainant has invested substantial financial and other resources in developing the reputation and goodwill of the ROOMS TO GO Mark, such that the public recognizes and identifies Complainant as the source of quality furniture and retail furniture store services.
Complainant has enjoyed tremendous success as a result of its efforts and has been consistently ranked among the top five furniture stores in the United States. Since 1996, Complainant has marketed its furniture and retail furniture stores online under the ROOMS TO GO Mark through its official website accessed at “www.roomstogo.com” (the “Official ROOMS TO GO Website”) based on its ownership of the domain name
Complainant owns numerous U.S. trademark registrations incorporating the terms “rooms to go”, including United States Trademark Registration No. 1,756,239, ROOMS TO GO, registered on March 2, 1993, for retail furniture store services in international class 42, and claiming a first use date of March 1, 1991; and United States Trademark Registration No. 2,396,055, registered on October 17, 2000, for furniture in international class 20, and claiming a first use date of March 1, 1992.
The disputed domain name was registered on May 17, 2005, and as of the time the Complaint was filed resolved to a click-through advertising website comprised of a parked page hosting a directory of pay-per-click (“PPC”) commercial advertising links to various websites for furniture and using furniture-related terms or descriptions for the links which appear to be competitive with Complainant’s goods and services identified under its ROOMS TO GO Mark.
5. Parties’ Contentions A. ComplainantComplainant contends that the disputed domain name is identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsThere are no exceptional circumstances within paragraph 5(e) of the Rules to prevent this Panel from determining the present dispute based upon the Complaint (as amended), notwithstanding the failure of any person to lodge a substantive formal Response in compliance with the Rules. Under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
Where no substantive Response is filed, however, Complainant must still make out its case in all respects under paragraph 4(a) of the Policy. To succeed, Complainant must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The Panel will address each of these requirements in turn.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
A. Identical or Confusingly SimilarOwnership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for its ROOMS TO GO Mark. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen,WIPO Case No. D2014-0657.
With Complainant’s rights in the ROOMS TO GO Mark established, the remaining question under the first element of the Policy is whether the disputed domain name (disregarding the Top-Level Domain (“TLD”) “.com” in which the domain name is registered) is identical or confusingly similar to Complainant’s ROOMS TO GO Mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903.
The disputed domain name incorporates Complainant’s ROOMS TO GO Mark in its entirety with one minor distinction, a common misspelling of the mark by one character, namely, replacing the letter “s” in the word “rooms” with the letter “e”, which Complainant claims is an obvious attempt to pass off the disputed domain name as Complainant’s
This substituted letter does not significantly affect the appearance or pronunciation of the domain name. The disputed domain name, therefore, is essentially identical to Complainant’s domain name
Prior UDRP panels have found such intentional alteration of one character to be the essence of typo-squatting. See Kayak Software Corp. v. Little Birds, Ltd.,WIPO Case No. D2010-1395; see also Associazione Radio Maria v. Ho Nim,WIPO Case No. D2010-0607 (providing a “classic example of typo-squatting” in the respondent’s changing a single letter of the complainant’s domain name). SurePayroll, Inc. v. Web Advertising, Corp.,WIPO Case No. D2007-0470. Prior UDRP panels have also held the difference of only one letter between a disputed domain name and a complainant’s mark does not prevent a finding of confusing similarity. See, e.g., Express Scripts, Inc. v. Whois Privacy Protection Service, Inc. / Domaindeals, Domain Administrator,WIPO Case No. D2008-1302 (
Complainant’s ROOMS TO GO Mark is clearly recognizable as incorporated in its entirety into the disputed domain name and for that reason the Panel finds the disputed domain name confusingly similar to the ROOMS TO GO Mark in which Complainant has rights.
Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsUnder the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If the complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name. First, Complainant asserts that it has never authorized, licensed, or otherwise permitted Respondent to use the ROOMS TO GO Mark in any manner, for the disputed domain name or otherwise, nor was there ever any connection or relationship between Complainant and Respondent.
Complainant has also claimed with persuasive evidence submitted that Respondent is not commonly known by the disputed domain name. The original Respondent listed in the WhoIs record submitted with the initial Complaint is “Domain Administrator, PrivacyGuardian.org”. The Registrar disclosed the underlying registrant, “DPLiqGr”, who has been added to Complainant’s Amended Complaint to include this registrant as a co-Respondent in addition to the original Respondent. Neither Respondent bears any resemblance to the disputed domain name whatsoever. Based on these facts, combined with the lack of evidence in the record to suggest otherwise, allows this Panel to find that Respondent is not commonly known by the disputed domain name or any variation thereof pursuant to Policy paragraph 4(c)(ii).
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC,WIPO Case No. D2007-1857.
Most importantly, Complainant’s evidence shows Respondent’s confusingly similar domain name resolves to Respondent’s website featuring a parked page hosting a directory of PPC commercial advertising links, which generate revenue for Respondent’s commercial gain and redirect traffic to third party furniture related websites of Complainant’s competitors. Prior UDRP panels have held that operating a “parked” site with pay-per-click links that compete or capitalize on reputation and goodwill of complainant’s marks or misleads Internet users is not a bona fide use and shows respondent’s lack of rights or legitimate interests. See, WIPO Overview 3.0, section 2.9; see also, Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy,WIPO Case No. D2017-0075. The Panel finds Respondent has no rights to or legitimate interests in the disputed domain name.
These facts establish Complainant’s prima facie showing. Respondent has not provided any basis on which that showing may be overcome. In addition, the Panel notes that the composition of the disputed domain name carries a risk of implied affiliation with Complainant. WIPO Overview 3.0, section 2.5.1.
Complainant has successfully met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of a respondent:
(i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 the registrant’s website or location or of a product or service on the registrant’s website or location.
Complainant first contends that given the renown and more than a decade of use by Complainant of the ROOMS TO GO Mark, that even a preliminary search of Complainant’s trademark and online presence would reveal, it is implausible that Respondent was unaware of Complainant when it registered the disputed domain name, and, therefore, Respondent’s knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration.
Prior UDRP panels have held that actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith. See WIPO Overview 3.0, section 3.2.2. See also eBay Inc. v. Sunho Hong,WIPO Case No. D2000-1633 (“actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith”).
The Panel finds that Respondent’s registration of the disputed domain name with awareness of Complainant and the ROOMS TO GO Mark, and with the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See Royds Withy King LLP v. Help Tobuy,WIPO Case No. D2019‑0624.
Complainant also contends Respondent’s efforts to misappropriate Complainant’s ROOMS TO GO Mark, capitalize on consumer confusion, and divert unsuspecting Internet users to third-party websites unrelated to Complainant undoubtedly constitutes bad-faith registration and use of the contested domain name under Policy [paragraph] 4(b)(iv).
Numerous panels under the Policy have found the registration and use of a domain name that is confusingly similar to a complainant’s trademark to constitute bad faith use pursuant to paragraph 4(b)(iv) of the Policy where, as here, the disputed domain name is associated with monetized parking pages that could be construed as associated with goods or services of Complainant. See, e.g., Tyson Foods, Inc. v. Domain Administrator, See PrivacyGuardian.org / Site Matrix LLC, Domain Administrator,WIPO Case No. D2018‑2050; Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; and SAP SE v. Domains by Proxy, LLC / Kamal Karmaker, WIPO Case No. D2016-2497.
In addition, in light of the long history of many years of continuous use of Complainant’s mark and Complainant’s renown and brand recognition in the United States, where Respondent is located, the Panel finds it is likely that Respondent knew of Complainant’s ROOMS TO GO Mark and by incorporating it in its entirety into the disputed domain name, Respondent sought to obtain a commercial benefit by attracting Internet users based on the confusion it created between the disputed domain name and the ROOMS TO GO Mark. See Western Union Holdings, Inc. v. Manuel Rodriguez,WIPO Case No. D2006-0850; see also Artemis Mtkg. Corp. v. ICS INC. / Online Resource, Online Resource Mgmt. Ltd. / VMI INC,WIPO Case No. D2019-0141.
The Panel finds Complainant’s arguments and evidence persuasive and has received no arguments or evidence from Respondent to the contrary. Considering all the circumstances, the Panel concludes that Respondent has registered and used the Disputed Domain Name in bad faith and Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Scott R. Austin
Sole Panelist
Date: November 30, 2021