Williams-Sonoma Inc. v. Anthony Galima d/b/a Unity 4 Humanity Inc.
Claim Number: FA0803001163666
Complainant is Williams-
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <potterybarn.tv>, registered with GoDaddy.com.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Hon. Charles K. McCotter, Jr. (Ret.), M. Scott Donahey, , and Joel M. Grossman, Chair, as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 14, 2008.
On March 14, 2008, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <potterybarn.tv> domain name is registered with GoDaddy.com and that the Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 9, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to firstname.lastname@example.org by e-mail.
On April 8, 2008, Respondent requested a fourteen (14) day extension of the deadline by which it could file a Response to the Complaint pursuant to Supplemental Rule 6. Complainant consented to this request. On April 9, 2008, the National Arbitration Forum granted Respondent’s request, setting a new deadline of April 23, 2008 by which Respondent could file a Response to the Complaint.
A timely Response was received and determined to be complete on April 23, 2008.
A timely Additional Submission was received from Complainant on April 28, 2008 and determined to be complete pursuant with Supplemental Rule 7.
A timely Additional Submission was received from Respondent on May 5, 2008 and determined to be complete pursuant with Supplemental Rule 7.
On May 7, 2008, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. Charles K. McCotter, Jr., (Ret.), M.Scott Donahey, and Joel M. Grossman, Chair, as Panelists.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns the POTTERY BARN trademark, and owns
Respondent claims that the complaint was brought in bad faith and seeks
a finding of Reverse Domain Name Hijacking. Respondent asserts that the ccTLD
“.tv” is “functional,” indicating a top-level domain name associated with
television, and that Complainant’s trademark rights, like all trademark rights,
are subject to fair use by others. Respondent claims that the domain name is
not confusingly similar to the mark because the ccTLD “.tv” clearly lets users
know that it is a television-based site, and not a retailer. Further,
Respondent claims it has rights and legitimate interest in the name, since it
acquired the name for the purpose of, and is currently working toward, establishing a “dot tv” Internet television channel
on what it calls the “Pottery Barn Theory of History.” In this regard,
Respondent points out that the term “Pottery Barn” has taken on a meaning in
society concerning the
C. Additional Submissions
In its Additional Submission Complainant argues that the great weight of precedent holds that the addition of a country code top-level domain such as “.tv’ does not serve to distinguish between Complainant’s mark and the domain name. Further, Complainant attacks Respondent’s “fair use” argument. First, Complainant argues that the term “pottery barn” is not generic and has come to be recognized as referring to its products. Second, to the extent that Respondent argues that it has a First Amendment right to use the mark, Complainant states that Respondent is misapplying a line of cases involving “gripe sites.” While it is true that certain domain names have been allowed which incorporate a mark and then add the word “sucks,” see, e.g., Bally Total Fitness Holding Corp. v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998), a case cited by Respondent, that is not the case here. Respondent’s website is not in any manner criticizing or commenting upon Complainant’s business, and the First Amendment cases such as “ballysucks” are not apposite. Complainant repeats its assertions that Respondent is not using the domain name for legitimate business purposes.
In Respondent’s Additonal Submission, it repeats the argument that because of the ccTLD “.tv” no Internet user could make the mistake of confusing it with Complainant’s mark. Respondent again asserts that the Complaint was brought in bad faith, and that Complainant is guilty of reverse domain name hijacking, as Respondent has the clear right to use the name for its Internet television channel.
The Panel finds that
a) the domain name is identical to or confusingly similar to Complainant’s mark;
b) Respondent has no rights or legitimate interest in the name; and
c) the name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel agrees with Complainant that is has rights in the mark, manifested by its many longstanding trademark registrations. The Panel also finds that the domain name is identical to or confusingly similar to the mark. First, the domain name wholly incorporates the mark. Second, a long line of precedent makes clear that using a different ccTLD does not sufficiently distinguish the name from the mark, and that Internet users will be confused as to whether the domain name is associated with Complainant. See World Wrestling Fed’n, Inc. v. Rapuano, DTV2001-0010 (WIPO May, 23, 2001), and Clairol Inc. v. Fux, DTV2001-0006 (WIPO May 7, 2001) (holding that the domain name “Clairol.tv” is identical to the complainant’s “Clairol” mark). The Panel rejects Respondent’s claim that the “.tv” ccTLD would make clear to users that the domain name has nothing to do with Complainant’s mark. To the contrary, the Panel believes users will be confused.
The Panel first finds that Respondent is not commonly known by the domain name, and that Complainant has never authorized Respondent to use its mark, two facts which Respondent does not dispute. Based on these facts, there is no showing of legitimate interest. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006). Next, the Panel finds that Respondent has no First Amendment defense. This is not a case involving a domain name like “Ballysucks” in which the respondent is making legitimate comment concerning the complainant’s business. The Panel finds no legitimate noncommercial use of the mark. Rather, it appears to the Panel that Respondent is using the domain name to attract users who are confused by the name and believe that the site is sponsored by or authorized by Complainant. The Panel concludes that the domain name is not being used for any bona fide offering of goods or services under the Policy. Further, the fact that Respondent offered to sell the domain name to Complainant is further evidence that it has no rights or legitimate interests in the name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum April 5, 2007) (holding that a respondent’s offer to sell a domain name for an amount in excess of its out-of-pocket costs is additional evidence that respondent has no legitimate rights in the name). Finally, the Panel rejects Respondent’s assertion that the term “pottery barn” is now a common term which anyone can use because of the “Pottery Barn Rule” supposedly invoked by Colin Powell in discussing the impending invasion of Iraq. To the extent that people wish to use the term “Pottery Barn Rule” in the course of debate about foreign policy, such use is certainly legitimate. But to use the term in a domain name is another thing altogether. The Panel notes that the domain name is not <potterybarnrule.tv>, and the Panel leaves for another day whether such a domain name could be legitimate. The issue presented in this case is whether the domain name <potterybarn.tv> is a fair use of Complainant’s mark, and the Panel determines that it is not. For all of the above reasons the Panel finds that the Respondent has no legitimate rights or interest in the name.
Respondent concedes that it was aware of
Complainant’s famous mark at the time of the filing. This fact alone could
support a finding that the name was registered and is being used in bad faith. See Yahoo! Inc v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <potterybarn.tv> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Charles K. McCotter, Jr. (Ret.), M.
Scott Donahey, , and Joel M. Grossman, Chair, Panelists
Dated: May 21, 2008
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