WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Artemis Marketing Corp. v. Privacy Service Provided by Withheld for Privacy ehf/ Luca Ferry

Case No. D2021-4209

1. The Parties

Complainant is Artemis Marketing Corp., United States of America, represented by Bryan Cave Leighton Paisner LLP, United States of America.

Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland/ Luca Ferry, United States of America.

2. The Domain Name and Registrar

The disputed domain name <roomstogoasias.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 14, 2021. On December 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 15, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 16, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 20, 2021.

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 Respondent of the Complaint, and the proceedings commenced on December 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 19, 2022.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on February 1, 2022. 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

Complainant Artemis Marketing Corp. f/k/a Rooms To Go, Inc. (“Artemis”) is an American corporation that was founded in 1991 and is located in Seffner, Florida. Its licensees operate retail and online home furnishing stores under the ROOMS TO GO trademarks.

Complainant owns trademark registrations of the ROOMS TO GO Mark in the United States for home furnishing goods. Sample trademark registrations for ROOMS TO GO by Complainant include:

- ROOMS TO GO, United States Trademark Reg. No. 1,756,239, registered on March 2, 1993; and
- ROOMS TO GO, United States Trademark Reg. No. 2,396,055, registered on October 17, 2000.

The disputed domain name was registered on November 29, 2021. At the time of the filing of this Complaint and currently, the disputed domain name does not resolve to an active or accessible webpage.

5. Parties’ Contentions

A. Complainant

According to Complainant, the disputed domain name is identical or confusingly similar to Complainant’s ROOMS TO GO trademark in which Complainant has rights as demonstrated through its cited registrations. The ROOMS TO GO Mark was adopted and has been continuously used in the United States since at least as early as 1992 in connection with numerous products and services. Today, the ROOMS TO GO Mark is largely recognizable due to the international online nature of Artemis’ business. Artemis maintains its online presence through its main website, “www.roomstogo.com”. Complainant also owns <roomstogoasia.com>, which has been registered since 2006.

Complainant submits that the disputed domain name is confusingly similar to Complainant’s ROOMS TO GO trademark. Complainant asserts that the disputed domain name fully incorporates the ROOMS TO GO trademark, plus the geographically descriptive pluralized word “asias”. Complainant also argues that the goodwill and recognition that has been attained under the name ROOMS TO GO is a distinctive identifier associated with Complainant’s services such that the public associates ROOMS TO GO with quality retail furniture. Complainant argues that the addition of a generic or descriptive term to their trademark is insufficient to negate confusing similarity.

Complainant argues that Respondent lacks any right or legitimate interest in the disputed domain name. Complainant asserts that Respondent does not have any trademark rights to the term “rooms to go” or any other terms used in the disputed domain name. Complainant also indicates there is no evidence that the Respondent retains unregistered trademark rights to the term “rooms to go” or any other terms used in the disputed domain name, and that Respondent has not received any license from Complainant to use domain names featuring the ROOMS TO GO trademark. Complainant states that Respondent is not currently offering any goods or services from the disputed domain name, and that the disputed domain name is held passively and does not resolve to a webpage. Complainant also alleges that Respondent is using the disputed domain name to send fraudulent emails posing as Complainant with suspicious attachments labeled with the ROOMS TO GO Mark, enticing the recipient to open them.

Complainant alleges that there is no plausible reason for the registration and use of the disputed domain name by Respondent, other than to take advantage of the goodwill and valuable reputation attached to the ROOMS TO GO brand and to conduct its fraudulent phishing scheme. Complainant states that it has longstanding prior rights in the ROOMS TO GO mark that span several decades. Complainant argues that the use of the ROOMS TO GO Mark to conduct fraudulent activity through email phishing cannot be deemed a bona fide offering under the UDRP.

Complainant argues that Respondent both registered and is using the disputed domain name in bad faith. Complainant states that its earliest trademark registration predates the creation date of the disputed domain name by nearly three decades, and that substantial goodwill and recognition has accrued since Complainant’s establishment in 1991. Complainant asserts that the ROOMS TO GO name has become well-known for its retail and online quality home furnishings. Complainant further asserts that it is because of this fame that Respondent registered the disputed domain name, a few days after which Respondent allegedly began to impersonate Complainant by sending fraudulent emails to Complainant’s employees using the disputed domain name. Complainant also argues that this use of the disputed domain name to send fraudulent emails demonstrates Respondent’s actual knowledge of Complainant and Complainant’s rights in the ROOMS TO GO Mark.

B. Respondent

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

6. Discussion and Findings

Under paragraphs 5(e) and 14(a) of the Rules, the effect of a default by a respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

A respondent’s default does not by itself satisfy a complainant’s burden of proof and is not necessarily an admission that the complainant’s allegations are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

A national or international trademark registration is prima facie evidence that the holder has the requisite rights in the registered mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it owns multiple registrations in the United States for the ROOMS TO GO trademark as referenced above. Therefore, Complainant has established that it has rights in the ROOMS TO GO mark.

The remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the Top-Level Domain (“TLD”) in which the domain name is registered) is identical or confusingly similar to Complainant’s mark. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. Id.

The issue of “identical or confusingly similar” for the purposes of paragraph 4(a)(i) should be adjudicated by utilizing a side-by-side comparison to decide “whether the alphanumeric string comprising the challenged domain name is identical … or sufficiently approximates [the trademark]” (see Advanced Magazine Publishers Inc. d/b/a Conde Nast Publications v. MSA, Inc. and Moniker Privacy Services, WIPO Case No. D2007-1743). Here, the disputed domain name incorporates the entirety of the ROOMS TO GO mark, eliminating the spaces between the words and with the addition of the plural of a geographically descriptive term “asias”. The spaces do not affect the meaning of the domain name, and the ROOMS TO GO is plainly recognizable in the disputed domain name. (Complainant already operates in Asia through its licensee ROOMS TO GO, and already has a registered domain name <roomstogoasia.com>.) The inclusion of the term “asias” does not sufficiently distinguish the disputed domain name from ROOMS TO GO not to be confusingly similar in visual or phonetic alphanumeric comparison. Therefore, the Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain name is confusingly similar to its ROOMS TO GO Mark.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that Respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name 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 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain name. Respondent has failed to come forward with any evidence showing rights or legitimate interests. Respondent has not submitted any arguments or evidence to rebut Complainant’s contention that Respondent is not an assignee or licensee of Complainant and that Respondent has no other business relationship with Complainant. Complainant has contended that Respondent is not commonly known by the disputed domain name and that there is no evidence that Respondent has established trademark rights in the disputed domain name.

Additionally, depending on the particular case circumstances, the non-use of a domain name has been considered by panels not to be a bona fide offering of goods or services. Previous panels have found that there was no bona fide offering of goods or services in an inactive website, and stated that failure to make active use of a domain name is not a use indicative of rights or legitimate interests. The disputed domain name does not associate any content whatsoever, nor does it demonstrate a use evincing rights or legitimate interests.
The disputed domain name has also been used to impersonate Complainant through an email phishing scheme, indicating misrepresentation of identity or otherwise fraudulent activity. Previous panels have categorically held that the use of a domain name for illegal activity (impersonation/passing off, or other types of fraud) never confers rights or legitimate interests on a respondent. See Prada S.A. v. Domains For Life, WIPO Case No. D2004-1019.

C. Registered and Used in Bad Faith

Bad faith under is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. Paragraph 4(b) of the Policy provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s 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 to the complainant who is the owner of the trademark or service mark or to a competitor of that 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 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 website or location or of a product or service on the respondent’s website or location.

Here, Respondent’s actions align with 4(b)(iv) of the Policy. The disputed domain name contains the entirety of the terms contained within the ROOMS TO GO mark, with the addition of the geographically descriptive pluralized term “asias”, and was being utilized by Respondent to conduct an email phishing scheme to lure employees of Complainant into opening attachments bearing the ROOMS TO GO Mark. Due to the global online nature of the ROOMS TO GO brand, and widespread sale of its home furnishings for the past three decades – not to mention the use to which the disputed domain name has been put, Respondent likely was aware of Complainant and the ROOMS TO GO Mark when it registered the disputed domain name. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

This Panel therefore finds that Respondent acted in bad faith by its registration and use of the disputed domain name, intentionally creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain name with the purpose of attracting Internet users for commercial gain through its phishing scheme as per paragraph 4(b)(iv) of the Policy.

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 disputed domain name <roomstogoasias.com> be transferred to the Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: February 15, 2022