Williams-Sonoma, Inc. v. Venkateshwara Distributor Private Limited.
Claim Number: FA 1361215
Complainant is Williams-Sonoma, Inc. (“Complainant”), represented by Ryan Bricker of Townsend and Townsend and Crew LLP, California, USA. Respondent is Venkateshwara Distributor Private Limited. (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <potterbarnkids.com>, registered with Tirupati Domains and Hosting Private Limited.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 1, 2010.
On December 7, 2010, Tirupati Domains and Hosting Private Limited confirmed by e-mail to the National Arbitration Forum that the <potterbarnkids.com> domain name is registered with Tirupati Domains and Hosting Private Limited and that Respondent is the current registrant of the names. Tirupati Domains and Hosting Private Limited has verified that Respondent is bound by the Tirupati Domains and Hosting Private Limited registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 8, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@potterbarnkids.com. Also on December 8, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <potterbarnkids.com> domain name is confusingly similar to Complainant’s POTTERY BARN KIDS mark.
2. Respondent does not have any rights or legitimate interests in the <potterbarnkids.com> domain name.
3. Respondent registered and used the <potterbarnkids.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Williams-Sonoma, Inc., is a specialty retailer of home and office furnishings. Its sells its wares under the THE POTTERY BARN mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 959,383 issued May 22, 1973), in a nationwide chain of retail stores, catalogs, and the internet. Complainant has expanded and created a brand aimed at children, under its POTTERY BARN KIDS mark, registered with the USPTO (Reg. No. 2,383,910 issued September 5, 2000).
Respondent, Venkateshwara Distributor Private Limited., registered the disputed domain name <potterbarnkids.com> on December 12, 2001. The disputed domain name resolves to a generic links page with hyperlinks to third party websites under titles consisting of generic products. These titles include “Gift Registry,” “Furniture,” and “Party Favors.”
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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 finds Complainant has demonstrated the necessary Policy ¶ 4(a)(i) rights. Complainant has supplied the Panel with the POTTERY BARN KIDS mark’s USPTO registration (Reg. No. 2,383,910 issued Sept. 5, 2000). This evidence has satisfied many previous panels’ Policy ¶ 4(a)(i) inquiry. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)). The USPTO registration is sufficient, Complainant need not demonstrate rights in Respondent’s home jurisdiction of India. See KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). Therefore, the Panel finds that Complainant had demonstrated the required rights in its POTTERY BARN KIDS mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent’s <potterbarnkids.com> is confusingly similar to its POTTERY BARN KIDS mark. Respondent has only made minimal changes to Complainant’s mark in its incorporation of the mark in its domain name. Respondent has merely incorporated the mark in its entirety except for the letter “y” and the spaces between the words. The omission of the letter “y” does not alter the fact that the disputed domain name is confusingly similar to the mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). The omission of the spaces in between the words of the mark and the addition of the generic-top-level domain (“gTLD”) “.com” do not create any distinctive value in the domain name because both alterations are required for in a domain name format. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Therefore, the Panel finds that Respondent’s <potterbarnkids.com> is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in the disputed domain name. The burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii) once Complainant makes a prima facie case in support of its allegations. In light of the evidence provided, the Panel finds Complainant has made a sufficient prima facie case. Because the Respondent has failed to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <potterbarnkids.com> domain name. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant alleges that Respondent is not commonly known by the disputed domain name. The record is completely lacking any affirmative evidence that Respondent is operating under the domain name or any version of the domain name. The WHOIS information indicates that Respondent is known by a name different than the domain name. Due to the void of affirmative evidence in the record, the Panel may find, and does find, that Respondent is not commonly known by the disputed domain name pursuant Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant further alleges that Respondent is diverting Internet users from its business and therefore has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees. Respondent uses a confusingly similar domain name to host a list of hyperlinks offering similar products as Complainant. This use diverts Internet users bound for Complainant to third parties. Previous panels have found that similar operations have not constituted a bona fide offering of goods or services or a legitimate noncommercial or fair use. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Following precedent set before it, the Panel finds that Respondent has not made a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii).
The Panel further finds that Respondent’s use of the disputed domain name is consistent with the practice of typosquatting. Respondent has chosen an alteration of Complainant’s mark that is likely to be accidently mistyped. The letter “y” could very well be omitted accidently by many users. This form of typosquatting is evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); See LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(ii).
The Panel finds that Respondent’s registration and use of the confusingly similar domain name to compete with Complainant’s business is an attempt to disrupt Complainant’s business and, therefore, indicates bad faith registration and use. Respondent displays several hyperlinks title with generic headings that are categories of the goods Complainant’s offers. These links compete with Complainant’s business. Using a confusingly similar domain name to host competing links indicates that the domain name was registered, and is being used, in bad faith. See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); See also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Therefore, the Panel finds evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The Panel finds further evidence of bad faith registration and use in Respondent’s use of a confusingly similar domain name to attract Internet users. Respondent has fostered confusion regarding the affiliation of its domain name. Respondent attempts to attract people to its domain name by fooling them into believing that the domain is somehow connected with Complainant’s goods. Respondent then receives click-through fees for those that do visit the third-party websites resolving from the hyperlinks. This creation of confusion using a domain name for profit is itself evidence of bad faith registration and use. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name evidence bad faith pursuant to Policy ¶ 4(b)(iv).
The Panel finds further evidence of bad faith in Respondent’s act of typosquatting, as detailed above. Typosquatting is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004) (“By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).”); see also Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. Typosquatting is inherently parasitic and of itself evidence of bad faith.”). Accordingly, the Panel finds Respondent’s typosquatting evidences Respondent’s bad faith registration and use under Policy ¶ 4(a)(ii).
The Panel finds that Complainant has met the requirements of Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <potterbarnkids.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 6, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page