The Complainant is Artemis Marketing Corp. of Seffner, Florida, United States of America ("United States"), represented by Bryan Cave Leighton Paisner LLP, United States.
The Respondents are ICS INC. and ORM LTD, both of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.1
The disputed domain names <oomstogo.com>, <roomatogo.com>, <roomstgo.com>, <roomstogopr.com>, <room2go.com>, and <roonstogo.com> are registered with Tucows Inc. (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 13, 2018. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 20, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 25, 2018.
The Center verified that the Complaint together with the amended 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 Respondents of the Complaint, and the proceedings commenced on July 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on August 17, 2018.
The Center appointed Matthew Kennedy as the sole panelist in this matter on August 28, 2018. 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 was founded in 1991 and, through its licensees, operates retail furniture stores and sells furniture throughout the United States and on the Internet. The Complainant owns trademark registrations for ROOMS TO GO, including United States Patent and Trademark Office trademark registrations number 1,756,239, issued March 2, 1993, specifying retail furniture store services in international class 42, and number 2,396,055, issued October 17, 2000 and specifying furniture in international class 20. Those trademark registrations remain effective. The Complainant registered the domain name <roomstogo.com> in 1996 and uses it in connection with its official website where it sells furniture.
The Respondents are the underlying registrant of the disputed domain names. WIPO panels in over 80 previous proceedings under the Policy have found that the Respondent ICS INC. registered and was using other domain names in bad faith.
The disputed domain names were created on the following dates:
|
Disputed domain name |
Date of creation |
|
room2go.com |
September 18, 2003 |
|
roomstogopr.com |
July 15, 2005 |
|
roomstgo.com |
October 2, 2011 |
|
roomatogo.com |
October 2, 2011 |
|
roonstogo.com |
November 14, 2011 |
|
oomstogo.com |
December 9, 2011 |
According to the video evidence provided by the Complainant, the disputed domain name <roomstogopr.com> redirects to a third party website that offers hotel booking services. Prices are quoted in USD. The other five disputed domain names resolve to landing pages that display sponsored links to the Complainant's competitors' furniture websites. One of these also displays a banner advertising that the disputed domain name <roonstogo.com> is for sale.
The disputed domain names are identical or confusingly similar to the Complainant's ROOMS TO GO trademark. The disputed domain name <roomstogopr.com> incorporates that trademark in its entirety. The other disputed domain names are common misspellings of that trademark.
The Respondents have no rights or legitimate interests in respect of the disputed domain names. The Respondents are not in any way associated with the Complainant and are not licensed or otherwise authorized by the Complainant to use the ROOMS TO GO trademark. The Respondents are not commonly known as "Rooms To Go" or any variation thereof. The disputed domain names are used for parked pages with click-through links to divert customers looking for the Complainant and its goods and services.
The disputed domain names were registered and are being used in bad faith. The Respondents use parked pages at the disputed domain names that contain furniture-related click-through advertising links, including links to competing furniture and home decor businesses. The disputed domain name <roomstogopr.com> automatically re-directs to a subpage of a third-party website. The disputed domain name <roonstogo.com> resolves to a website that displays an explicit offer to sell it.
The Respondents did not reply to the Complainant's contentions.
The Complaint initiates disputes in relation to two nominally different domain name registrants. The Respondent ICS INC. is named as the registrant of the disputed domain names <room2go.com> and <roomstogopr.com> while the Respondent ORM LTD is named as the registrant of the other four disputed domain names. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other. To the extent necessary, the Complainant requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant's request.
Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant's request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.2.
As regards common control, the Panel notes that the contact street address for all six disputed domain names is the same post office box, while disputed domain names registered in different names share the same contact telephone number or the same contact email address. The disputed domain names follow a pattern in that they are all similar to the same trademark (discussed in Section 6.2A below), all use the same privacy service and are all registered with the same Registrar. The websites to which five of the disputed domain names resolve operate in the same manner. Moreover, a previous panel in a proceeding under the Policy found that the same named registrants were subject to common control: Delta Dental Plans Association v. ICS INC. aka ORM Ltd./Balticsea LLC/Contact Privacy Inc.; Registrant [4459713]: Taranga Services Pty Ltd/Moniker Privacy Services; ICS INC./Private Registrations Aktien Gesellschaft/Privacy Protection Service INC d/b/a PrivacyProtect.org; ICS INC./GEORGE WASHERE/WHOIS PRIVACY PROTECTION SERVICE, INC.; Diamond Point Enterprises Limited/Whois Privacy Services Pty Ltd; Transure Enterprise Ltd/Above.com Domain Privacy; Online Management/Domains By Proxy, LLC; Ryan G Foo, PPA Media Services/Fundacion Private Whois; Pham Dinh Nhut/Vietnam Domain Privacy Services; Pavol Icik, Poste Restante/Dragan Platic, Poste restante/Privacy Protection Service, WIPO Case No. D2014-0474. In these circumstances, the Panel is persuaded that the disputed domain name registrants are under common control or indeed the same person.
As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.
Accordingly, the Panel decides to consolidate the disputes regarding the two nominally different disputed domain name registrants (hereinafter "the Respondent") in a single proceeding.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the ROOMS TO GO trademark.
The disputed domain names all include the generic Top-Level Domain ("gTLD") suffix ".com". A gTLD suffix is generally disregarded in the comparison between a domain name and a trademark for the purposes of the first element of the Policy.
The disputed domain name <roomstogopr.com> wholly incorporates the Complainant's ROOMS TO GO trademark, minus the spaces, which cannot form part of a domain name for technical reasons. Although this disputed domain name also contains the element "pr", those are merely two letters and the trademark remains clearly recognizable.
The other disputed domain names <oomstogo.com>, <roomatogo.com>, <roomstgo.com>, <room2go.com>, and <roonstogo.com> all incorporate the Complainant's ROOMS TO GO trademark, minus the spaces, but with minor differences. Some omit a letter. One also substitutes "2" for "to". Others contain a spelling error: "a" is substituted for "s" in <roomatogo.com>, and "n" is substituted for "m" in <roonstogo.com> when those characters are often next to each other on a keyboard. The Panel finds that the disputed domain names are obvious misspellings of the Complainant's trademark, a practice commonly known as "typosquatting". Therefore, the Panel does not consider these typographical differences capable of dispelling confusing similarity with the Complainant's trademarks. See Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
Therefore, the Panel finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain names or a name corresponding to the [disputed] domain names in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain names, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel has already found that the disputed domain names are confusingly similar to the Complainant's ROOMS TO GO trademark. The Complainant states that the Respondent is not in any way associated with the Complainant and is not licensed or otherwise authorized by the Complainant to use the ROOMS TO GO trademark.
With respect to the first and third circumstances, the disputed domain name <roomstogopr.com> redirects to a third party website that offers hotel booking services. Although there is a connection between "rooms" and the services offered on that website, the phrase "rooms to go" has no obvious meaning other than as a reference to the Complainant's trademark. The Respondent uses the Complainant's trademark in this disputed domain name to attract Internet users to a website where hotel booking services are offered for a price. The other five disputed domain names are obvious misspellings of the Complainant's trademark. The Respondent uses the Complainant's trademark in these five disputed domain names to attract Internet users to websites that display advertising links to the Complainant's competitors' e-commerce websites. This use is either for the Respondent's own commercial gain, or that of the operators of the linked websites, or both. These are not bona fide offerings of goods or services for the purposes of the Policy, nor legitimate noncommercial or fair uses.
There is no evidence that the Respondent has been commonly known by any of the disputed domain names.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that case because it did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of any of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
"(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] 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 [the respondent's] web site or location or of a product or service on [the respondent's] web site or location".
As regards registration, all the disputed domain names were registered years after the Complainant registered its ROOMS TO GO trademark. The disputed domain name <roomstogopr.com> wholly incorporates the Complainant's trademark. Although the word "rooms" and the phrase "to go" are dictionary terms, the Panel notes that the phrase "rooms to go" has no obvious meaning other than as a reference to the Complainant's trademark. The other five disputed domain names are all obvious misspellings of the Complainant's trademark. These five disputed domain names have no apparent meaning other than as an approximation of the Complainant's trademark. Therefore, the Panel finds that all the disputed domain names have been registered in bad faith.
As regards use, the disputed domain name <roomstogopr.com> redirects to a third party website that offers hotel booking services for a price. The other five disputed domain names are used to attract Internet users who misspell the Complainant's trademark and domain name and direct them to the Complainant's competitors' websites. All the disputed domain names operate by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of those websites or of a good or service on those websites. This use is intentional and either for the Respondent's own commercial gain, if it is paid to direct traffic to these other websites, or for the commercial gain of the operator of those other websites, or both. In any of these scenarios, the facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267.
Furthermore, the Respondent has engaged in a pattern of conduct of registering and using domain names that incorporate or misspell third party trademarks in bad faith. See, for example, DBA LUX 1 v. ICS INC., WIPO Case No. D2012-0122; West Interactive Services Corporation v. ICS Inc., WIPO Case No. D2016-2480; and Kryterion International Limited v. ICS Inc., WIPO Case No. D2017-1590. This is further evidence of bad faith.
Therefore, the Panel finds that all the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <oomstogo.com>, <roomatogo.com>, <roomstgo.com>, <roomstogopr.com>, <room2go.com>, and <roonstogo.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: September 3, 2018
1 The Complaint was originally filed against Contact Privacy Inc., a privacy domain name registration service. The Registrar has confirmed that the registrants of the disputed domain names are the Respondents.