WILLIAMS-SONOMA, INC. v. Taranga Services Pty Ltd c/o Domain Admin
Claim Number: FA1010001351752
Complainant is WILLIAMS-SONOMA, INC. ("Complainant"), represented by Ryan Bricker of Townsend and Townsend and Crew LLP, California, USA. Respondent is Taranga Services Pty Ltd c/o Domain Admin ("Respondent"), New Zealand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <willamssonoma.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2010; the National Arbitration Forum received payment on October 12, 2010.
On October 13, 2010, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <willamssonoma.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 15, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 4, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@willamssonoma.com. Also on October 15, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 11, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <willamssonoma.com> domain name is confusingly similar to Complainant’s WILLIAMS-SONOMA mark.
2. Respondent does not have any rights or legitimate interests in the <willamssonoma.com> domain name.
3. Respondent registered and used the <willamssonoma.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, WILLIAMS-SONOMA, INC., is a specialty retailer of home and office furnishings. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WILLIAMS-SONOMA mark (e.g., Reg. No. 1,777,864 issued June 22, 1993). Complainant uses the WILLIAMS-SONOMA mark in connection with kitchenware, cooking products, culinary equipment, flatware, table linens, furniture, cookbooks, and other printed materials.
Respondent, Taranga Services Pty Ltd c/o Domain Admin, registered the <willamssonoma.com> domain name on November 14, 2000. Respondent’s disputed domain name resolves to a website hosting numerous pay-per-click links, many of which redirect Internet users to websites that offer kitchenware and other home products in competition with Complainant.
Respondent has been the respondent in at least twelve other UDRP proceedings in which the domain names were transferred to the respective complainants. See Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Servs. Pty Ltd, FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Am. Airlines v. Taranga Servs. Pty Ltd, FA 1302684 (Nat. Arb. Forum Mar. 9, 2010); see also Vanguard Trademark Holdings USA LLC v. Taranga Servs. Pty Ltd, FA 1305932 (Nat. Arb. Forum Mar. 23, 2010).
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in the WILLIAMS-SONOMA mark through its registrations of the mark with the USPTO (e.g., Reg. No. 1,777,864 issued June 22, 1993). The Panel may find these trademark registrations sufficiently prove Complainant’s rights in the WILLIAMS-SONOMA mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). The Panel also finds that it is irrelevant whether Complainant holds trademark registrations with the trademark authority in the country in which Respondent resides. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant avers the <willamssonoma.com> domain name is confusingly similar to its WILLIAMS-SONOMA mark. Respondent replicates the second word in Complainant’s mark, includes a misspelled version of the first word in the mark that deletes the second letter “i,” deletes the hyphen between the terms, and attaches the generic top-level domain (“gTLD”) “.com.” The Panel finds that misspelling Complainant’s mark in the disputed domain name fails to differentiate the disputed domain name from Complainant’s mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”). The Panel finds that deleting the hyphen does not substantially change Complainant’s mark nor prevent confusing similarity. See Nat’l Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name <cspan.net>, which omitted the hyphen from the trademark spelling, C-SPAN, is confusingly similar to the complainant's mark). The Panel also finds that the presence of the gTLD has no effect on preventing confusing similarity according to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Therefore, the Panel finds that Respondent’s <willamssonoma.com> domain name is confusingly similar to Complainant’s WILLIAMS-SONOMA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
In presenting a case against Respondent alleging that Respondent lacks rights and legitimate interests in the disputed domain name, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case. The Panel finds that Complainant has met this obligation in the instant proceedings, thereby transferring the burden to show rights and legitimate interests to Respondent. In its failure to respond, however, Respondent indicates that it has no rights and interests in the disputed domain name and the Panel finds that Complainant’s allegations may be viewed as true. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”). The Panel elects to consider the information in the record in light of the Policy ¶ 4(c) factors, however, in order to make a complete determination on Complainant’s rights and legitimate interests.
Complainant asserts that it has not authorized Respondent to use the WILLIAMS-SONOMA mark. The WHOIS information for the <willamssonoma.com> domain name lists the registrant as “Taranga Services Pty Ltd,” a name which does not appear to be associated with the disputed domain name. The Panel therefore concludes that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Brown v. Sarrault, FA 99584 (Nat. Arb. Forum Oct. 16, 2001) (finding that the respondent was not commonly known by the <mobilitytrans.com> domain name because it was doing business as “Mobility Connections”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant contends that Respondent uses the <willamssonoma.com> domain name to divert Complainant’s intending customers, via pay-per-click links, to other websites offering branded house ware, kitchenware, and other goods that compete with Complainant. Complainant argues that using the disputed domain name to host such pay-per-click links is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that the respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
In addition, Respondent’s use of the <willamssonoma.com> domain name, a common misspelling of Complainant’s WILLIAMS-SONOMA mark, constitutes typosquatting. The Panel finds that Respondent’s use of a disputed domain name, that is a common misspelling of Complainant’s mark, to redirect Internet users seeking Complainant, is further evidence that Respondent fails to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent has been the respondent in at least twelve other UDRP proceedings in which the domain names were transferred to the respective complainants. See Capital One Fin. Corp. v. Domain Admin a/k/a Taranga Servs. Pty Ltd, FA 1285637 (Nat. Arb. Forum Nov. 2, 2009); see also Am. Airlines v. Taranga Servs. Pty Ltd, FA 1302684 (Nat. Arb. Forum Mar. 9, 2010); see also Vanguard Trademark Holdings USA LLC v. Taranga Servs. Pty Ltd, FA 1305932 (Nat. Arb. Forum Mar. 23, 2010). The Panel may find that such a history of registering domain names found to be appropriating others’ marks demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii) intended to prevent a trademark holder from effectively using its mark in a domain name. See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant argues that the links present at Respondent’s <willamssonoma.com> domain name frequently divert Complainant’s intending customers to the websites offering competing goods like furniture, home appliances, cookware, etc. Respondent’s maintenance of the website resolving from the disputed domain name facilitates competition with Complainant and disrupts Complainant’s business. The Panel finds that Respondent’s disruptive actions as a competitor indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Complainant contends that the links displayed at Respondent’s <willamssonoma.com> domain name are pay-per-click links that are designed to maximize Respondent’s profit since they are related to the goods Complainant offers. Complainant argues that Respondent uses Complainant’s WILLIAMS-SONOMA mark in the disputed domain name to increase traffic to Respondent’s website by attracting Complainant’s customers. Complainant alleges that Respondent aims to create a likelihood of confusion among these Internet users for Respondent’s own commercial gain, which the Panel finds to be evidence of bad faith registration and use according to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Furthermore, Respondent has engaged in typosquatting through its use of the <willamssonoma.com> domain name, which is a common misspelling of Complainant’s WILLIAMS-SONOMA mark. Therefore, the Panel finds Respondent’s engagement in the practice of typosquatting additionally constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use under Policy ¶ 4(b)(iv).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <willamssonoma.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 16, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page