Williams-Sonoma, Inc. v. Hans Schuurmans
Claim Number: FA1204001440577
Complainant is Williams-Sonoma, Inc. (“Complainant”), represented by Ryan Bricker of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Hans Schuurmans (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <potterybarnworld.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 23, 2012; the National Arbitration Forum received payment on April 24, 2012.
On April 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <potterybarnworld.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 24, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 14, 2012 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@potterybarnworld.com. Also on April 24, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 May 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
Complainant owns registrations for the POTTERY BARN service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 2,021,077, registered December 3, 1996.)
Respondent’s <potterybarnworld.com> domain name is confusingly similar to Complainant’s POTTERY BARN service mark.
Respondent has never been known by the POTTERY BARN mark or the domain name <potterybarnworld.com>.
Complainant has never authorized Respondent to use its POTTERY BARN service mark.
The website resolving from the disputed domain name features links to the websites of third-party competitors of complainant offering products similar to those of Complainant.
These links and related advertisements are pay-per-click links from which Respondent benefits financially.
Respondent is not making a noncommercial or fair use of, or a bona fide offering of goods or services by means of, the disputed domain name.
Respondent has no rights to or legitimate interests in the POTTERY BARN mark or the <potterybarnworld.com> domain name.
Respondent both registered and uses the <potterybarnworld.com> domain name in bad faith.
Respondent’s passive holding of the <potterybarnworld.com> domain name con-stitutes bad faith registration and use of the domain.
Complainant’s mark is famous, and Respondent knew of Complainant’s mark both when it registered and while it has used the contested domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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."
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:
i. the domain name registered by Respondent 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 domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in the POTTERY BARN service mark pursuant to Policy ¶4(a)(i) through its registration of the mark with a national trademark authority, the USPTO. See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that a complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in those marks pursuant to Policy ¶ 4(a)(i)); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007):
Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <potterybarnworld.com> domain name is confusingly similar to Complainant’s POTTERY BARN service mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in its entirety, merely removing the spaces between its terms, and adding the geographic term “world” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, are insufficient to differentiate the domain name from the mark under the standards of the Policy. 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.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of the geographic term “cancun” to a complainant’s mark in forming the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheaptickets-cancun.net>, and <cheapticketscancun.org> domain names does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to a respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny,
that Respondent has not been commonly known by the POTTERY BARN mark or the <potterybarnworld.com> domain name, and that Complainant has never authorized Respondent to use its POTTERY BARN service mark. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Hans Schuurmans,” which does not resemble the disputed domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have established that it has rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See, for example, Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”)
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <potterybarnworld.com> domain name to resolve to a website which diverts potential customers seeking Complainant’s goods to Re-spondent’s website, and that the resolving website features pay-per-click links to the websites of third-party competitors of Complainant offering products similar to those of Complainant, and that Respondent benefits financially from the visits of Internet users to the websites resolving from these links and related advertise-ments. This use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use interest under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website via a domain name that is confusingly similar to the mark of another was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds, therefore, that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s employment of the <potterybarnworld.com> domain name in the manner described in the Complaint constitutes evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be misled to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be con-fused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by using it to feature links to third-party websites that offered services similar to those offered by that complainant).
In addition, we are satisfied from the record that Respondent had knowledge of Complainant, and of Complainant’s rights in its POTTERY BARN service mark, when Respondent registered the <potterybarnworld.com> domain name. This knowledge is evidence of bad faith registration and use of the domain name under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent had knowledge of a complainant's rights in the UNIVISION mark when it registered a disputed domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <potterybarnworld.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 31, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page