The Complainant is Williams-Sonoma, Inc. of Wilmington, Delaware, United States of America (“US”), represented by Kilpatrick Townsend & Stockton LLP, US.
The Respondent is Fundacion Private Whois c/o Domain Administrator of Panama.
The disputed domain name <pottterybarn.com> is registered with Internet.bs Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On November 18, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2013, 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.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 27, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 17, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 18, 2013.
The Center appointed Adam Samuel as the sole panelist in this matter on January 7, 2014. 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 sells home and office furnishings through retail stores, catalogues and the Internet. It is the owner of a number of US trademark registrations for the name POTTERY BARN, including number 2021077 registered on December 3, 1996 and number 0959383 registered on May 22, 1973. The disputed domain name was created on January 14, 2007. The Complainant markets its products through a number of domain names, notably <potterybarn.com>, registered on October 8, 1995.
This section contains the Complainant’s submissions with which the Panel may or may not agree.
In registering the disputed domain name, the Respondent is using a near-identical version of the Complainant’s trademark POTTERY BARN for the sole purposes of diverting online traffic and obtaining illicit pecuniary gain. The disputed domain name consists of an intentional misspelling of the Complainant’s trademark involving the addition of one “t” in the word “pottery”. The addition of a letter of a mark does not create a distinctive domain name.
The Complainant has never authorized the Respondent to use the Complainant’s marks or name in any way. The Respondent has never been known by the Complainant’s mark or the disputed domain name.
The Respondent’s website contains hyperlinks to verbatim reproductions of the Complainant’s trademark and offers products and links to products that are the same as or similar to those offered by the Complainant.
The Respondent has appropriated many other trademarks for similar parasitic purposes and has repeatedly been the subject of UDRP proceedings brought by other aggrieved trademark owners.
The Respondent has used an imitation of the Complainant’s mark to create confusion and attract Internet users to its website all for commercial gain. Typosquatting, 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 is inherently parasitic and of itself evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
Under the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The disputed domain name consists of the Complainant’s trademark with a third “t” added in the middle of the other two within its name and the generic Top-Level Domain (“gTLD”) “.com”. This appears to be a classic example of “typo-squatting”, where a domain name attracts Internet users who make a small typing error. The disputed domain name without the generic “.com” both sounds and looks almost identical to the Complainant’s trademark.
In Sierra HealthStyles LLC v. Modern Limited - Cayman Web Development, WIPO Case No. D2006-0020, the panel said on this subject:
“Here, the domain name has two differences from Registration No. 2152729 and the key element of the other two registrations: the addition of the .com suffix and the substitution of “i” for the first “a” in the trademark.
The substitution of the “i” for the first “a” is visually apparent on close inspection. The domain name and the trademark, MIRAVAL, however, are phonetically similar. There are various ways that both versions of the word may be pronounced and some of these will or may sound the same or similar. The word element of the domain name created by the substitution of the “i” for the “a” is not a plain English word or otherwise generic. There are likely to be circumstances where a person might unintentionally type in the domain name instead of the trademark term, particularly having regard to imperfect recollection and the potential for persons using the Internet to “guess” at domain names. In these circumstances a finding of confusing similarity in line with the “typosquatting” cases is appropriate. See e.g. AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937; America Online, Inc. v. Johuathan Investments, Inc. and AOLLNEWS.COM, WIPO Case No. D2001-0918; and Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775.
Consequently, the Panel finds that the disputed domain name is at least confusingly similar to the Complainant’s registered trademark rights.”
For essentially the same reasons, the Panel concludes here that the disputed domain name is confusingly similar to both the Complainant’s registered trademark.
The Respondent is not called “pottery barn” with or without the third “t” or anything similar and does not appear to engage in a legitimate trade under that or any related name. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. For these reasons, and in the absence of any response on this point, notably one contradicting the Complainant’s claim that the Respondent has never been connected to it in any way, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The first word of “Potttery Barn” has no apparent independent existence or meaning except as a misspelling of the Complainant’s trademark. This was registered before the disputed domain name was registered. It is impossible, at least without a Response to the Complaint, to identify a reason why the Respondent registered the disputed domain name other than to attract business or Internet users to its site who were looking for a site connected to the Complainant’s trademark or business.
The only explanation of what has happened seems to be that the Respondent’s motive in registering and using the website is to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.
This conclusion is supported by the view expressed in Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568:
“Typosquatting is virtually per se registration and use in bad faith. It is difficult to conceive of circumstances that would overcome the inference that the typosquatter ‘intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site by creating a likelihood of confusion with the complainant’s mark as to the source’ of the website. Here such conduct was undertaken to send Complainant’s customers to a site that promoted directly competing services.”
For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <pottterybarn.com> be transferred to the Complainant.
Adam Samuel
Sole Panelist
Date: January 23, 2014