Williams-Sonoma, Inc. v. Forum, LLC
Claim Number: FA0510000572984
Complainant is Williams-Sonoma, Inc. (“Complainant”), represented by Timothy R. Cahn of Townsend and Townsend and Crew LLP, Two Embarcadero Center, 8th Floor, San Francisco, CA 94111. Respondent is Forum LLC (“Respondent”), PO Box 2331, Roseau, Roseau 00152 DM.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <wiliamssonoma.com>, registered with Fabulous.com Pty Ltd.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 6, 2005.
On October 6, 2005, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <wiliamssonoma.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 October 10, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 31, 2005 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 postmaster@wiliamssonoma.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 8, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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." 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 <wiliamssonoma.com> domain name is confusingly similar to Complainant’s WILLIAMS-SONOMA mark.
2. Respondent does not have any rights or legitimate interests in the <wiliamssonoma.com> domain name.
3. Respondent registered and used the <wiliamssonoma.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.
Complainant sells its items throughout the United States via retail
stores, catalogs and the Internet.
Complainant began operated in 1956, when it started selling a range of
cookware from France, and the WILLIAMS-SONOMA brand is now associated with
hundreds of products from around the world.
Complainant owns the WILLIAMS-SONOMA mark for which it has
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) (i.e., Reg No. 1,777,864 issued June 22, 1993).
Respondent registered the <wiliamssonoma.com> domain name on June 17, 2002. The domain name resolves to a website that displays links for various products and services
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.
Complainant has provided evidence of its registrations of the WILLIAMS-SONOMA mark with the USPTO. Registering a mark with a national authority is sufficient to satisfy the requirement of rights under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
The <wiliamssonoma.com> domain name differs from Complainant’s WILLIAMS-SONOMA mark with the omissions of one letter “l” and a hyphen. These changes are not sufficient to create a domain name that is distinct from the registered mark, and the Panel finds that the domain name is confusingly similar to Complainant’s mark. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark); see also Guinness UDV N. Am., Inc. v. Dallas Internet Servs., D2001-1055 (WIPO Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar to the complainant’s SMIRNOFF mark because merely removing the letter “f” from the mark was insignificant). Furthermore, the addition of the generic top-level domain (“gTLD”) “.com” does nothing to disturb the finding of confusing similarity. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
The Panel finds that Complainant has established Policy ¶ 4(a)(i).
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant has made a prima facie case, the burden then shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (describing the burden shifting from the complainant to the respondent regarding rights and legitimate interests); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). The Panel finds that Complainant has presented a prima facie case, and the Panel now chooses to consider whether an evaluation of all the evidence demonstrates rights or legitimate interests for Respondent under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <wiliamssonoma.com> domain name and that Respondent is not authorized by Complainant to use Complainant’s WILLIAMS-SONOMA mark or any variation thereof for any purpose. Based upon these assertions and the record, including the WHOIS information for Respondent, the Panel finds no evidence suggesting that Respondent has established rights or legitimate interests under Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The <wiliamssonoma.com> domain name leads Internet users to Respondent’s website that displays links to various third-party websites in competition with Complainant. The Panel infers that Respondent profits from referral fees when Internet users searching for Complainant access these third-party websites via Respondent’s website at the disputed domain name. The Panel finds evidence that Respondent is attempting to benefit by using a version of Complainant’s WILLIAMS-SONOMA mark to attract Internet users to Respondent’s own website. Respondent’s diversionary use of the 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 of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Complainant has established Policy ¶ 4(a)(ii).
The evidence shows that Respondent is using the <wiliamssonoma.com>
domain name to operate a website that provides links to various products and
services similar to those offered by Respondent. Respondent’s use of a domain name confusingly similar to
Complainant’s WILLIAMS-SONOMA mark to offer competing products presumably to
earn referral fees suggests that Respondent is attempting to attract Internet
users to its commercial website by creating a likelihood of confusion. This is evidence of bad faith registration
and use under Policy ¶ 4(b)(iv). See
Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent
is using the domain name at issue in direct competition with Complainant, and
giving the impression of being affiliated with or sponsored by Complainant,
this circumstance qualifies as bad faith registration and use of the domain
name pursuant to Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook,
FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain
name that incorporates another's mark with the intent to deceive Internet users
in regard to the source or affiliation of the domain name is evidence of bad
faith.”); see also Associated Newspapers Ltd. v. Domain Manager,
FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
Complainant contends that Respondent is engaged in a clear case of “typosquatting” and that this is conclusive evidence of Respondent’s bad faith. The Panel finds that Respondent’s practice of using a slightly misspelled version of Complainant’s WILLIAMS-SONOMA mark to take advantage of possible typographical errors made by Complainant’s customers amounts to typosquatting and constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See 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.”); see also Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a “simple misspelling” of the complainant's DERMALOGICA mark which indicated typosquatting and bad faith pursuant to 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 <wiliamssonoma.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: November 22, 2005
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