The Complainant is Williams-Sonoma, Inc. of Wilmington, Delaware, United States of America, represented by Kilpatrick Townsend & Stockton LLP, United States of America.
The Respondent is E. Linders of Escharen, the Netherlands. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with SIDN through Metaregistrar. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 26, 2013. On April 26, 2013, the Center transmitted by email to SIDN a request for registrar verification in connection with the Domain Name. On April 29, 2013, SIDN transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 3, 2013. In accordance with the Regulations, article 7.1, the due date for Response was May 23, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2013.
The Center appointed Willem Hoorneman as the panelist in this matter on May 29, 2013. The Panel finds that it was properly constituted. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2. 4. Factual Background
The Complainant is a premier specialty retailer of home furnishings and sells its products through retail stores (more than 190 around the world), catalogs and the Internet. In particular, the Complainant sells home furnishings and textiles under its brand POTTERY BARN.
The Complainant is holder of, inter alia¸ the following trademarks (the “Trademarks”):
- the Community word mark POTTERY BARN, with registration no. 512632, registered on September 24, 1999 for goods and services in classes 20, 21 and 42;
- the Community word mark POTTERY BARN, with registration no. 3742897, registered on April 23, 2008 for goods and services in classes 35 and 42; and
- the Community word mark POTTERY BARN, with registration no. 4569521, registered on April 28, 2008 for goods and services in classes 4, 8, 11, 14, 16, 20, 21, 24, 35 and 42.
The latter two trademarks have been applied for on April 1, 2004 and September 1, 2005, respectively, and were first published on January 10, 2005 and January 29, 2007, respectively.
The Complainant is also commercially active on the Internet operating an e-commerce website under the domain name through which its goods and services are also offered and advertised. In addition, it has registered several other domain names comprising or containing the name “pottery barn” under several different TLD extensions.
The Domain Name was registered by the Respondent on January 31, 2007. The Domain Name directs to a so-called parking page of a webhosting company, indicating that the Domain Name has been reserved. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is confusingly similar to its (famous) Trademarks. The Domain Name contains the Trademarks – POTTERY BARN – in their entirety. The Domain Name is therefore identical, or at least confusingly similar, to the Trademarks.
The Complainant claims that the Respondent has no rights to or legitimate interests in the Domain Name. The Respondent is not affiliated with the Complainant and the Complainant has never licensed or authorized the Respondent to use it Trademarks in any way. According to the Complainant, in no way does the Respondent use the Domain Name in a bona fide manner for offering products or services, nor has it made demonstrable preparations to do so, as it is merely holding the Doman Name passively. Also, the Respondent has never been known under the Domain Name. Finally, the Respondent’s mere passive holding of the Domain Name cannot amount to a legitimate noncommercial use.
The Complainant asserts that the Domain Name has been registered or is being used in bad faith. The Complainant claims that the Respondent must have been familiar with the Complainant’s well-known Trademarks at the time of registering the Domain Name. Given also the Respondent’s failure to make any use whatsoever of the Domain name, the Complainant contends that it is therefore evident that the Respondent has registered the Domain Name in order to prevent the Complainant from registering the Domain Name, to disrupt the Complainant’s activities and to create confusion and attract Internet users to a domain that such users assume is associated with the Complainant and its famous Trademarks. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As the Respondent has not filed a Response, the Panel shall rule on the basis of the Complaint. In accordance with article 10.3 of the Regulations, the Complaint shall in that event be granted, unless the Panel considers it to be without basis in law or fact.
The Panel notes that, in accordance with article 16.4 of the Regulations, the Center has fulfilled its obligation to employ reasonably available means to achieve actual notice of the Complaint to the Respondent.
Based on article 2.1 of the Regulations, a request to transfer a domain name must meet three cumulative conditions:
a. The domain name is identical or confusingly similar to a trademark or trade name protected under Dutch law in which the complainant has rights, or other name by means of article 2.1(a) under II of the Regulations; and
b. The respondent has no rights to or legitimate interests in the domain name; and
c. The domain name has been registered or is being used in bad faith.
Considering these conditions, the Panel rules as follows: A. Identical or Confusingly Similar
The Complainant has based its Complaint on the Trademarks and has submitted copies of its trademark registrations demonstrating that it is the holder of the Trademarks. The Trademarks are protected under Dutch law.
It is established case law that the top level domain “.nl” may be disregarded in assessing the similarity between the relevant trademark or trade name on the one hand, and the domain name on the other hand (see: Taylor Made Golf Company, Inc. v. Lotom Group S.A.,WIPO Case No. DNL2010-0067; Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
Further, the only difference between the Domain Name and the Trademarks is the lack of interspacing between the elements “pottery” and “barn”, where interspacing cannot be part of a domain name at all. As for the rest, the Domain Name is textually (and therefore visually and phonetically) identical to the Trademarks.
Therefore, the Panel finds that the Domain Name is confusingly similar, and even virtually identical, to the Trademarks. B. Rights or Legitimate Interests
As a result of its failure to submit a Response, the Respondent did not use the opportunity to show rights to or legitimate interests in the Domain Name. It may be assumed that the Respondent was and is not commonly known by the Domain Name. The record does not include any indication that the Respondent has any relevant trademark or trade name rights regarding the term “potterybarn”.
The Domain Name links to a parking page of a webhosting company, indicating that the Domain Name has been reserved. Absent any contrary evidence from the Respondent, its passive holding of the Domain Name does not constitute a legitimate noncommercial use of the Domain Name (see: Teachers Insurance and Annuity Association of America v. Wreaks Communications Group,WIPO Case No. D2006-0483).
Based on the foregoing, the Panel is of the opinion that the Respondent has no rights to or legitimate interests in the Domain Name. C. Registered or Used in Bad Faith
The registration (or, in respect of the Trademarks with registration numbers 3742897 and 4569521, at least the applications and publications) and use of the Complainant’s Trademarks predate the registration and use by the Respondent of the Domain Name by several years. As the Complainant owns trademark rights effective and enforceable in the Netherlands, while the Domain Name is in the “.nl” domain space, the Panel deems it highly likely that the Respondent was aware of the Complainant’s Trademarks when registering the Domain Name.
The apparent lack of any active use (i.e. for the Domain Name to resolve to an active website) of the Domain Name without any active attempt to sell or to contact the trademark holder (so-called ‘passive holding’ by the Respondent) does not as such prevent a finding of bad faith. On the contrary, the specific cumulative circumstances in this case in which the Domain Name is identical to the (undisputedly
well-known) Trademarks of the Complainant and in which the Respondent has provided no evidence whatsoever of any actual or contemplated good-faith use by it of the Domain Name, are indicative of bad faith on the part of the Respondent in its registration and/or use of the Domain Name (see: The Coca-Cola Company v. P. Engbers,WIPO Case No. DNL2012-0037, concerning the domain name ). Having refrained from submitting a Response, the Respondent has failed to provide any evidence to the contrary.
On the above grounds, the Panel finds that the requirements of registration or use in bad faith of the Domain Name pursuant to article 2.1(c) of the Regulations have been met. 7. Decision
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Name be transferred to the Complainant.
Willem Hoorneman
Panelist
Date: June 12, 2013
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