The Complainant is Artemis Marketing Corp., United States of America (“United States”), represented by Bryan Cave Leighton Paisner, United States.
The Respondents are Admin Contact, c/o PrivateName Services Inc., Canada / Amir Cohen, Seychelles, and Registration Private, Domains by Proxy, LLC, United States / VMI INC, United Kingdom.
2. The Domain Names and RegistrarsThe disputed domain names are
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 20, 2021. On October 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On October 21 and 22, 2021, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 26, 2021, providing the registrant and contact information for multiple underlying registrants disclosed by the Registrar, and inviting the Complainant to either amend the Complaint adding the Registrar-disclosed registrants as formal Respondents and provide relevant arguments or evidence demonstrating that all named Respondents are, in fact, the same entity and/or that all Disputed Domain Names are under common control and indicate which domain names will no longer be included in the current Complaint. The Complainant filed an amended Complaint on October 27, 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 the Respondents of the Complaint, and the proceedings commenced on November 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on December 14, 2021.
The Center appointed Gabriela Kennedy as the sole panelist in this matter on January 12, 2022. 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 BackgroundThe Complainant was founded in 1991. Its licensees operate retail furniture stores and sell furniture under its various ROOMS TO GO trademarks and service marks (the “Complainant’s Trademark”). Operating under the Complainant’s Trademark, the Complainant has been consistently ranked among the top five furniture shops in the United States for the past 19 years, and owns around 141 showrooms with USD 2.35 billion in sales as of 2017.
Thus, the Complainant has obtained exclusive right to the Complainant’s Trademark by virtue of its extensive use. The Complainant is also the owner of multiple trademark registrations for the ROOMS TO GO mark including, inter alia, the United States trademarks ROOMS TO GO (Reg. No. 1,756,239, registered on March 2, 1993) for “retail furniture store services” and ROOMS TO GO (Reg. No. 2,396,055, registered on October 17, 2000) for “furniture”. The Complainant’s Trademark is also the domain name of the Complainant’s website, “www.roomstogo.com”.
The Disputed Domain Names
(a) The Disputed Domain Names are confusingly similar and effectively identical to the Complainant’s Trademark as well as the Complainant’s domain name
(b) The Respondents do not have any rights or legitimate interests in the Disputed Domain Names. The Complainant has never authorized or given permission to the Respondents, who are not associated with the Complainant in any way, to use the Complainant’s Trademark or to register the Disputed Domain Names. There is also no evidence of the Respondents’ use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services, nor a legitimate non-commercial or fair use of the Complainant’s Trademark.
(c) The Respondents’ registrations of the Disputed Domain Names, which completely incorporate the Complainant’s Trademark, are in itself acts of bad faith by someone with no legal connection to the Complainant’s business. The Respondents have used parked pages at the Disputed Domain Names containing furniture-related click-through advertising links in order to generate revenue in respect of “click-through” traffic. Such online traffic has been attracted by virtue of the association between the Disputed Domain Names and the Complainant’s ROOMS TO GO mark. Therefore, given these factors, the Respondents have registered and are using the Disputed Domain Names in bad faith.
B. RespondentsThe Respondents did not reply to the Complainant’s contentions.
The fact that the Respondents have not submitted a formal Response does not automatically result in a decision in favour of the Complainant. However, the Respondents’ failure to file a Response may result in the Panel drawing appropriate inferences from such default. The Panel may also accept all reasonable and supported allegations and inferences flowing from the Complainant as true (see Entertainment Shopping AG v. Nischal Soni, Sonik Technologies,
WIPO Case No. D2009-1437, and Charles Jourdan Holding AG v. AAIM,
WIPO Case No. D2000-0403).
Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that where a complaint is filed against multiple respondents, panels will take into account whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties.
In this case, the Complainant argues that:
(i)
(ii)
(iii) There is a common modus operandi used for the cybersquatting activities being committed with these Disputed Domain Names.
The Panel also notes that the Respondents did not provide any substantive response to the Complaint. In light of the above, the Panel accepts the Complainant’s contentions and finds that the Complainant has established that the Disputed Domain Names are more likely than not under the common control of both Respondents and it would be fair and equitable to all Parties and procedurally efficient to have the Complainant’s claims consolidated against all registrants of the Disputed Domain Names.
As such, the Panel allows the consolidation as requested by the Complainant.
6.2 Substantive IssuesUnder paragraph 4(a) of the Policy, the Complainant is required to prove each of the following three elements:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) the Disputed Domain Names have been registered and is being used by the Respondents in bad faith.
The Panel accepts that the Complainant has rights in the Complainant’s Trademark, based on its various trademark registrations and rights to domain names such as, inter alia, the United States trademarks listed above in Section 4. The Complainant’s Trademark is also the domain name of the Complainant’s website, “www.roomstogo.com”.
The Disputed Domain Names incorporate the Complainant’s Trademark with an intentional omission or misspelling of one letter. Pursuant to section 1.9 of the WIPO Overview 3.0, a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. Here, the Disputed Domain Names contain sufficiently recognizable aspects of the Complainant’s Trademark.
As such, the Panel finds that the Disputed Domain Names are confusingly similar to the Complainant’s Trademark, and accordingly, paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate InterestsOnce a complainant establishes a prima facie case in respect of the lack of rights or legitimate interests of a respondent in a disputed domain name, the respondent then carries the burden of demonstrating that it has rights or legitimate interests in the domain name. Where the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See section 2.1 of the WIPO Overview 3.0.
The Panel accepts that the Complainant has not authorised the Respondents to use the Complainant’s Trademark, and there is no relationship between the Complainant and the Respondents which would otherwise entitle the Respondents to use the Complainant’s Trademark. Accordingly, the Panel is of the view that a prima facie case has been established by the Complainant and it is for the Respondents to show rights or legitimate interests in the Disputed Domain Names. As the Respondents have not submitted a Response, the Panel will assess the case based on the reasonable inferences that can be drawn from the Complainant’s evidence.
Pursuant to paragraph 4(c) of the Policy, the Respondents may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to them of the dispute, the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names was in connection with a bona fide offering of goods or services;
(ii) the Respondents have been commonly known by the Disputed Domain Name, even if they have acquired no trademark or service mark rights; or
(iii) the Respondents are 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.
There is no evidence to suggest that the Respondents’ use of, or demonstrable preparations to use the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services. The Panel agrees with the Complainant that the Respondents’ use of the Disputed Domain Names cannot be regarded as legitimate noncommercial or fair use as the Respondents appear to have registered the Disputed Domain Names solely for the purpose of generating Internet traffic by fraudulently appropriating the Complainant’s reputation and Trademark. Moreover, as stated in section 2.9 of the WIPO Overview 3.0, the PPC links at issue do not represent a bona fide offering since such links compete with or capitalize on the reputation and goodwill of the Complainant’s Trademark or otherwise mislead Internet users.
In addition, no evidence has been provided to prove that the Respondents have trademark rights corresponding to the Disputed Domain Names, or that the Respondents have become known by the Disputed Domain Names.
Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in the Disputed Domain Names and the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithUDRP panels have consistently found that the mere registration of a domain name that is confusingly similar to a widely-known trademark by an unaffiliated entity can already by itself create a presumption of bad faith. See section 3.1.4 of the WIPO Overview 3.0.
After reviewing the supporting evidence submitted by the Complainant, the Panel agrees with the Complainant that the Complainant’s Trademark appears to be fairly well known. A quick Internet search conducted by the Panel shows that the top search results returned for the search phrase “rooms to go” are the Complainant’s websites and third party websites providing information relating to the Complainant’s furniture business. Therefore, taking this into consideration together with the fact that the Disputed Domain Names incorporate intentional misspellings of the Complainant’s Trademark, that the websites to which the Disputed Domain Names resolve included PPC links capitalizing on the Complainant’s Trademark, the Respondents must have been aware of the Complainant and the Complainant’s Trademark rights when registering the Disputed Domain Names.
In addition, the Panel finds that the following factors further support a finding that the Disputed Domain Names were registered and are being used by the Respondents in bad faith:
(i) The Respondents failed to respond to the Complainant’s contentions and has provided no evidence of any actual or contemplated good faith use by it of the Disputed Domain Names.
(ii) It is difficult to conceive of any plausible use of the Disputed Domain Names that would amount to good faith use, given that the Disputed Domain Names contain intentional misspelling of the Complainant’s Trademark. The Respondents are using the Disputed Domain Name to earn click-through revenue from the misdirection of Internet users caused by the confusingly similar Disputed Domain Names. The Respondents have not demonstrated any attempt to make legitimate use of the Disputed Domain Names and the websites to which they resolve, which evidences a lack of rights or legitimate interests in the Disputed Domain Names, as confirmed by past Panels (see Washington Mutual, Inc., v. Ashley Khong,
WIPO Case No. D2005-0740); and
(iii) The Respondents registered the Disputed Domain Names using a privacy shield to conceal their identity (see Primonial v. Domain Administrator, PrivacyGuardian.org / Parla Turkmenoglu,
WIPO Case No. D2019-0193).
In the circumstances, the Panel finds that the Respondents registered and have been using the Disputed Domain Names in bad faith, and paragraph 4(a)(iii) of the Policy has been satisfied.
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 Names,
Gabriela Kennedy
Sole Panelist
Date: January 26, 2022