The Complainant is Williams-Sonoma, Inc. of San Francisco, California, United States of America ("U.S."), represented by Kilpatrick Townsend & Stockton LLP, U.S.
The Respondent is Kimjunsoo of Yongin-si, Gyeonggi-do, Republic of Korea.
The disputed domain names <pbkidskorea.com>, <pbkidskorea.net>, <potterybarnkidskorea.com>, <potterybarnkidskorea.net> and <potterybarnkorea.net> (collectively the "Disputed Domain Names") are registered with Megazone Corp., dba HOSTING.KR (the "Registrar").
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2017. On May 11, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On May 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 12, 2017, the Center notified the parties in both English and Korean that the language of the Registration Agreement for the Disputed Domain Names was Korean. On May 15, 2017, the Complainant requested for English to be the language of the proceeding. On May 23, 2017, the Respondent sent an email requesting for Korean to be the language of the proceeding.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, in both English and Korean, and the proceedings commenced on May 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 16, 2017.
The Center appointed Andrew J. Park as the sole panelist in this matter on June 23, 2017. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The Complainant Williams-Sonoma, Inc. is a premier specialty retailer of home and office furnishings and sells nationwide through retail stores, catalogs, and the Internet. The Complainant's brands, including its Pottery Barn and Pottery Barn Kids lines of home furnishings and textiles, have been used at least as early as 1956 and are among the most successful brands in the industry. These brands have sold billions of dollars' worth of merchandise worldwide.
The Complainant is the exclusive owner of U.S. and Korean Trademark Registrations for various well-known marks, including POTTERY BARN, POTTERY BARN KIDS, PB KIDS and PB TEEN, the earliest registration of which dates back to 1973.
The Disputed Domain Names were registered on October 5 and 6, 2017. The Disputed Domain Names resolve to the Registrar's parking page.
The Complainant contends that the Disputed Domain Names should be transferred to the Complainant because:
1) the Disputed Domain Names are identical and/or confusingly similar to the Complainant's POTTERY BARN, POTTERY BARN KIDS, PB KIDS and PB TEEN marks (collectively the "Marks") and infringe upon the Complainant's exclusive common law and registered rights in and to the Marks. The Respondent used the Complainant's Marks in the Disputed Domain Names in their entirety with the intent to mislead consumers into believing that the Disputed Domain Names are affiliated with the Complainant to attract Internet users to the Respondent's websites for the Respondent's commercial gain.
2) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. The Respondent has never been known by the Marks and it does not use the Disputed Domain Names for bona fide offerings of goods or services nor a legitimate noncommercial or fair use of the Disputed Domain Names. Further, the Complainant does not have any relationship whatsoever with the Respondent, and the Complainant has never authorized the Respondent to use the Marks.
3) the Disputed Domain Names were registered and are being used in bad faith. The Respondent registered the Disputed Domain Names with knowledge of the Complainant's rights in the Marks. In addition, the Respondent is using the Disputed Domain Names to intentionally attract, for commercial gain, consumers to the Respondent's websites by creating a likelihood of confusion with the Complainant as to the source, sponsorship, affiliation, or endorsement of the Respondent's websites.
The Respondent in its email of May 23, 2017, stated that it registered the Disputed Domain Names in order to sell its favorite brand Pottery Barn Kids in the Republic of Korea. The Respondent did not, however, otherwise formally reply to the Complainant's contentions.
The Registration Agreement for the Disputed Domain Names is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, i.e., Korean. Here, the Center preliminarily accepted the Complaint as filed in English, and has indicated that it would accept a response in either English or Korean, subject to a determination by the Panel pursuant to paragraph 11 of the Rules.
Having considered the circumstances of the case, the Panel decides that English be adopted as the language of the proceeding under paragraph 10 of the Rules. In coming to this decision, the Panel has taken the following into account: although the administrative proceeding was notified to the Respondent in both English and Korean, the Respondent has chosen not to participate in the proceeding despite having the opportunity to do so (by not submitting a formal response to the Complaint). Additionally, all five (5) of the Disputed Domain Names are in English and the content on the websites at the Disputed Domain Names is offered in English. The Panel also notes that the Respondent sent an email to the Center on May 23, 2017 in English.
In light of these circumstances, the Panel concludes that it will accept the Complaint as filed in English and issue a decision in English.
Paragraph 4(a) of the Policy sets forth three requirements which have to be met for the Panel to order the transfer of the Disputed Domain Names to the Complainant. Those requirements are: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith.
The Panel has to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable, pursuant to paragraph 15(a) of the Rules. In accordance with paragraphs 5(f) and 14(b) of the Rules, if the respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint.
This element consists of two parts: first, whether the Complainant has rights in a relevant trademark and, second, whether the Disputed Domain Names are identical or confusingly similar to that trademark.
The Panel finds that the Complainant has established registered rights in the Marks and that the Disputed Domain Names are confusingly similar to the Complainant's Marks. The Disputed Domain Names incorporate the Complainant's Marks in their entirety, and the added term "korea" does nothing to avoid a finding of confusing similarity to the Complainant's Marks.
For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the Disputed Domain Names are identical or confusingly similar to the Complainant's Marks.
Pursuant to paragraph 4(c) of the Policy, the Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. Once such a prima facie case is made, the burden of production shifts to the Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names. If the Respondent fails to do so, the Complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 2.1.
The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights to and/or legitimate interests in the Disputed Domain Names. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules (see, e.g., Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009; Isabelle Adjani v. Second Orbit Communications, Inc., WIPO Case No. D2000-0867). The Complainant should nevertheless make out a prima facie case that the Respondent lacks rights or legitimate interests (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).
Here, the Panel finds that the Complainant has made out an unrebutted prima facie case.
The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its Marks. There is nothing in the record to suggest that the Respondent has made a legitimate noncommercial or fair use of the Disputed Domain Names or has been commonly known by the Disputed Domain Names. Also, there is no evidence that the Respondent has an intention to use the Disputed Domain Names in connection with a bona fide offering of goods or services. The Panel's view is that these facts may be taken as true in the circumstances of this case as they have not been denied by the Respondent.
The evidence, which is not denied by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Names and the Complainant's Marks, which are not descriptive or generic as it relates to home and office furnishings and textiles in order to free ride on the notoriety of the Complainant's Marks. The Panel finds that this conduct does not amount to a bona fide offering of goods nor otherwise provide a right or legitimate interest in the Disputed Domain Names under paragraph 4(a)(ii) of the Policy (see, e.g., American Automobile Association Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592; Avon Products Inc. v. Jongsoo Lee, WIPO Case No. D2001-0272).
The Panel agrees with the Complainant that there is no evidence whatsoever that the Respondent is currently using or commonly known by, has used or has been commonly known under, or has a bona fide intent to use or be commonly known under the Disputed Domain Names or the Marks.
Accordingly, the Panel holds that the Respondent has no rights or legitimate interests in the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith. Any one of the following is sufficient to support a finding of bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location.
The Complainant claims that the Respondent registered and is using the Disputed Domain Names in bad faith in violation of the Policy, paragraph 4(a)(iii). Specifically, the Complainant claims that the Respondent's behavior falls within the circumstances described under the Policy, paragraph 4(b)(iv), by using the Disputed Domain Names for the purpose of attempting to attract, for commercial gain, Internet users to the Respondent's websites of the Disputed Domain Names by creating a likelihood of confusion with the Complainant's Marks as to the source, affiliation, or endorsement of the websites.
As already mentioned, the Respondent did not file any formal response to the Complaint, failing thereby to rebut the Complainant's allegations of the Respondent's bad faith registration and use of the Disputed Domain Names.
Nevertheless, the Panel still has the responsibility of determining which of the Complainant's assertions are established as facts, and whether the conclusions asserted by the Complainant can be drawn from the established facts (see Harvey Norman Retailing Pty Ltd v. Oxford-University, WIPO Case No. D2000-0944).
The Panel finds that since the Disputed Domain Names merely add a geographical term to the Complainant's mark, it is obvious that the Respondent did not come up with the Disputed Domain Names independently without the Complainant's Marks in mind; in deed the Respondent admits as much. Accordingly, the evidence, which is not rebutted by the Respondent, shows that the Respondent knew of and has sought to take unfair advantage of the similarity between the Disputed Domain Name and the Complainant's Marks.
The conduct described above falls squarely within paragraph 4(b)(iv) of the Policy and accordingly, the Panel concludes that the Respondent registered and is using the Disputed Domain Names in bad faith pursuant to the Policy, paragraph 4(a)(iii).
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names, <pbkidskorea.com>, <pbkidskorea.net>, <potterybarnkidskorea.com>, <potterybarnkidskorea.net>, and <potterybarnkorea.net> be transferred to the Complainant.
Andrew J. Park
Sole Panelist
Date: July 7, 2017