DECISION

 

Williams-Sonoma, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf

Claim Number: FA2310002067774

 

PARTIES

Complainant is Williams-Sonoma, Inc. ("Complainant"), represented by Raffi V. Zerounian of Hanson Bridgett LLP, California, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <potterybarn.us.com>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant participated in the mandatory CentralNic Mediation, and the mediation process was terminated on October 1, 2023.

 

Complainant submitted a Complaint to Forum electronically on October 25, 2023; Forum received payment on October 25, 2023.

 

On October 26, 2023, NameCheap, Inc. confirmed by e-mail to Forum that the <potterybarn.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").

 

On October 30, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 20, 2023 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@potterybarn.us.com. Also on October 30, 2023, the Written Notice of the Complaint, notifying Respondent of the e-mail 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 21, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in POTTERY BARN.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

A.       Respondent

No Response was received.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant sells furniture and other home products by reference to the trademark, POTTERY BARN, which it has registered with the United States Patent & Trademark Office ("USPTO") as, inter alia, Reg. No. 6,389,622 on June 15, 2021; and

2.       the disputed domain name was registered on April 12, 2022, and resolves to a webpage that uses the trademark and images of goods taken directly from Complainant's website.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

 

Paragraph 4(a) of the CDRP 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 or is being used in bad faith.

 

The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that said mediation must have been terminated prior to the consideration of the Complaint.  The Panel notes that this is the case here.

        

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (the "UDRP Policy") and the CDRP Policy, the Panel has drawn upon UDRP precedent in rendering its decision.

 

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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments (see, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint")).

  

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the CDRP Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights since it provides proof of its registration of POTTERY BARN with the USPTO, a national trademark authority.   

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com", can be disregarded, as can the element, ".us", which reproduces the ccTLD for the United States. The trademark remains the distinctive and memorable part of the domain name (see, for example, Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016): "A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them."). The Panel finds the domain name to be confusingly similar to the trademark and so finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the CDRP Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the CDRP Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the CDRP Policy:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;  or

 

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;  or

 

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the holder of the domain name does not carry any suggestion that Respondent is commonly known by the domain name.         There is no evidence that Respondent has any trademark rights of its own and Complainant states that there is no association between the parties. There is nothing to contradict that claim. Finally, the evidence shows that the domain name resolves to a site which uses Complainant's trademark and product images. The site poses as being controlled by Complainant. It states, inter alia, that:

 

"www.Potterybarn.us.com is a participant in the Amazon Services LLC Associates Program,an affiliate advertising program designed to provide a means for sites to earn advertising fees by advertising and linking to Amazon.com" 

 

When an internet user clicks on an advertised product, they are taken to www.amazon.com. It appears then that Respondent is illegitimately earning click through fees by posing as Complainant.  Further, the internet user is offered goods that are competitive with those sold by Complainant under the trademark.

 

The Panel finds that Complainant has made a prima facie case that Respondent has no rights or interests in the domain name (see, for example, Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA 1626253 (Forum July 29, 2015): "Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use."; Materia, Inc. v. Michele Dinoia, FA 1627209 (Forum Aug. 20, 2015): "The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.").

 

The onus shifts to Respondent but, absent a Response, is not met and so the Panel finds Respondent to have no rights or interests. Complainant has thus established the second element of the CDRP Policy.

 

Registration or Use in Bad Faith

The CDRP Policy is noteworthy in that paragraph 4(a)(iii) requires either registration in bad faith or use in bad faith (contra, the UDRP Policy). However, paragraph 4(b) of the CDRP Policy is entitled "Evidence of Registration and Use in Bad Faith" and states that "[f]or the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a Domain Name in bad faith. Paragraph 4(b) then echoes its counterpart in the UDRP Policy but for the addition of paragraph 4(b)(v) which establishes registration and use in bad faith if "you have provided false contact details to us."

 

Applying the CDRP Policy to the facts, the Panel finds that Respondent's actions fall under both paragraphs 4(b)(v) and 4(b)(iv), the latter stating that:

 

"…by using the Domain Name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

 

As stated, the paragraph 4(b) scenarios are non-exhaustive and given that Complainant need only show bad faith registration, or bad faith use, the evidence of the resolving website clearly establishes bad faith use and so the Panel also finds that that paragraph 4(a)(iii) is established on that basis.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <potterybarn.us.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

Dated:  November 22, 2023