WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wayfair LLC v. Xiamen Privacy Protection Service Co., Ltd. / zhang qin

Case No. D2018-2032

1. The Parties

The Complainant is Wayfair LLC of Boston, Massachusetts, United States of America (“United States”), internally represented.

The Respondent is Xiamen Privacy Protection Service Co., Ltd. of Xiamen, Fujian, China / zhang qin of Nanjing, Jiangsu, China.

2. The Domain Names and Registrar

The disputed domain names <waydfair.com> and <wayfgair.com> (the “Domain Names”) are registered with eName Technology Co., Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 6, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 10, 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 September 10, 2018.

On September 10, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On the same day, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 Respondent of the Complaint, and the proceedings commenced on September 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 15, 2018.

The Center appointed Karen Fong as the sole panelist in this matter on October 19, 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.

4. Factual Background

The Complainant is an e-commerce business selling online selections of furniture, home furnishings, decor and other goods with its primary business location in the United States. The Complainant trades under the trade mark WAYFAIR. It has trade mark registrations for WAYFAIR in a few countries including the United States under United States Trade Mark Registration Number 4143919 in Class 35 file on February 28, 2011 and registered on May 15, 2012 (the “Trade Mark”).

The Complainant operates the websites “www.wayfair.com”, “www.wayfair.de”, “www.wayfair.co.uk” and “www.wayfair.ca”.

The Respondent who is based in China registered the Domain Names on August 28, 2014. The Domain Names are connected to pay-per-click websites both if which have links offering the Domain Names for sale (the “Websites”). The pay-per-click links resolve to a variety of websites including travel and diet websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name and that the Domain Name was registered and being used in bad faith. The Complainant requests transfer of the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Language of Proceeding

The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding. According to the information received from the Registrar, the language of the Registration Agreement for the Domain Names is Chinese.

The Complainant submits that the language of the proceeding should be English for the following reasons: the Complainant is a company based in the United States; the Domain Names are “.com” domains which are operated by Verisign; in order to conduct the proceedings in a timely and cost effective manner, the language of the proceedings should be in English.

In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.

The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English, and the website to which the Domain Name resolve is rendered in the English language. In all the circumstances, the Panel determines that English be the language of the proceeding.

B. General

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:

(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and

(iii) The Domain Names were registered and being used in bad faith.

C. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has established that it has rights to the Trade Mark.

The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.

In this case the Domain Names consist of misspellings of the Complainant’s Trade Mark. One of them has the letter “d” in between “way” and “fair” and the other has an additional letter “g” in the Trade Mark. Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), states that a domain name which consists of a common, obvious, or intentional misspelling of a trade mark is considered by panels to be confusingly similar to the relevant mark for the purposes of the first element. In this case, the Trade Mark is clearly recognizable in the Domain Names. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement (section 1.11 of the WIPO Overview 3.0).

The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.

D. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is 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.

Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of WIPO Overview 3.0 that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with relevant evidence of rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.

The Complainant contends that it is not affiliated with the Respondent and has not licensed or otherwise authorized the Respondent to use the Trade Mark or register the Domain Name or any domain name. The Respondent’s use of misspellings of the Trade Mark for the Domain Names in relation to pay-per-click websites is not bona fide or legitimate noncommercial or fair use of the Domain Name.

The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.

E. Registered and Used in Bad Faith

To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.

The Panel is satisfied that the Respondent must have been aware of the Trade Mark when it registered the Domain Names given the Trade Mark was filed and registered prior to registration of the Domain Names, the Domain Names consist of misspellings of the Trade Mark and the fact that the Websites are pay-per-click websites which also offer the Domain Names for sale.

WIPO Overview 3.0, section 3.2.2 states as follows:

“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”

The fact that there is a clear absence of rights or legitimate interests coupled with no credible explanation for the Respondent’s choice of the Domain Names are also significant factors to consider (as stated in section 3.1.1 of WIPO Overview 3.0). The Panel finds that registration is in bad faith.

The Panel also finds that the actual use of the Domain Names is in bad faith. The Websites are pay-per-click sites which have been set up to the commercial benefit to the Respondent. It is highly likely that web users when typing the Domain Names into their browser, or finding it through a search engine would have been looking for a site operated by the Complainant rather than the Respondent. The Domain Names are likely to confuse Internet users trying to find the Complainant’s official website. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Names.

The Respondent employs the fame of the Trade Mark to mislead users into visiting the Websites instead of the Complainant’s. From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent’s Websites are and the products sold on them are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Names were registered and are being used in bad faith under paragraph 4(b)(iv) of the Policy.

In addition, the current use of the Websites includes the purpose of selling the Domain Names which supports the bad faith use under this limb. Considering the circumstances, the Panel considers that the Domain Names are also being used in bad faith.

Accordingly, the Complaint has satisfied the third element of the UDRP.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names <waydfair.com> and <wayfgair.com> be transferred to the Complainant.

Karen Fong
Sole Panelist
Date: October 29, 2018