Williams-Sonoma, Inc. v.
Kurt Fees c/o K Fees
Claim Number: FA0703000937704
PARTIES
COMPLAINANT is Williams-Sonoma, Inc. (“COMPLAINANT”), represented by Timothy
R. Cahn, of Townsend and Townsend and Crew LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <potterybarn.org>, registered with Intercosmos
Media Group Inc.
PANEL
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.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
COMPLAINANT submitted a Complaint to the National Arbitration Forum
electronically on March 14, 2007; the
National Arbitration Forum received a hard copy of the Complaint on March 19, 2007.
On March 16, 2007, Intercosmos Media Group Inc. confirmed by e-mail
to the National Arbitration Forum that the <potterybarn.org> domain name is
registered with Intercosmos Media Group Inc.
and that Respondent is the
current registrant of the name. Intercosmos Media Group Inc. has verified that Respondent is bound by the Intercosmos Media Group Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On March 23, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of April 11, 2007 by which Respondent could file a Response to the
Complaint, was transmitted to Respondent
via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@potterybarn.org by e-mail.
A timely Response was received and determined to be complete on April 10, 2007.
COMPLAINANT filed an Additional Submission on April 17, 2007.
On April 16, 2007, pursuant to COMPLAINANT’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
On April 18, 2007, Respondent
sent a mail which can be qualified as an additional Response.
On April 23, 2007, RESPONDENT filed an Additional Submission.
RELIEF SOUGHT
COMPLAINANT requests that the domain name be transferred from Respondent to COMPLAINANT.
PARTIES’ CONTENTIONS
A. COMPLAINANT
COMPLAINANT
makes the following assertions:
1. The <potterybarn.org> domain name is identical and confusingly
similar to COMPLAINANT's mark.
2. Respondent has
no rights or legitimate interest in the <potterybarn.org> domain name.
3.
Respondent has registered and used
the <potterybarn.org> domain
name in bad faith.
B. Respondent
Respondent requests the Panel to deny COMPLAINANT’s request as to the <potterybarn.org>
domain name.
FINDINGS
COMPLAINANT is a premier specialty retailer of home furnishings, such as furniture, appliances and accessories for kitchens, bedrooms and bathrooms, and a full range of home office furnishings, bedding, linens and accessories, under the registered trademarks “POTTERY BARN,” “POTTERY BARN KIDS” and “PBteen.”
COMPLAINANT owns federal trademark registrations, including:
a. THE POTTERY BARN, registration number 655,819 (filed 8/02/1956, registered
12/17/1957);
b. THE POTTERY BARN, registration number 976,194 (filed 1/05/1973, registered
1/08/1974);
c. THE POTTERY BARN, registration number 976,344 (filed 1/05/1973, registered
1/08/1974);
d. THE POTTERY BARN, registration number 959,383 (filed 5/12/1972, registered
5/22/1973);
e. POTTERY BARN, registration number 2,021,077 (filed 2/12/1996, registered
12/03/1996);
f. POTTERY BARN KIDS, registration number 2,383,910 (filed 7/16/1998,
registered 9/05/2000);
g. PBteen, registration number 2,972,766 (filed 8/12/2002, registered 7/19/2005); and
h. P.B.KIDS, registration number 3,076,971 (filed 7/16/1998, registered 5/13/2003).
COMPLAINANT has produced true and correct copies of the trademark registrations.
COMPLAINANT also owns the following European Community
trademark registration: POTTERY BARN, registration number 512,632 (filed
04/04/1997, registered 09/24/1999).
COMPLAINANT sells through retail stores, and catalog and Internet sites under the same trademarks.
COMPLAINANT's business
includes 193 retail stores in the
Annually, COMPLAINANT distributes well over 200 million catalogs bearing the Pottery Barn family of trademarks.
With respect to Internet sales, COMPLAINANT says it has spent significant resources designing the indexing capabilities of its websites and in paying to sponsor high-priority search results on Internet search engines such as Google and Yahoo.
COMPLAINANT argues that Respondent registered the <potterybarn.org> domain name that includes COMPLAINANT's "POTTERY BARN" trademark.
At the time COMPLAINANT contacted Respondent with its demand letter, Respondent had no content on the <potterybarn.org> website at all, but it resolved simply to an "Under Construction" page.
After receiving COMPLAINANT's demand letter, Respondent added content to the website to advertise electronic products and to provide links to many websites, including adult pornographic sites.
After COMPLAINANT contacted Respondent, Respondent offered to sell the disputed domain name for more than $10,000.
Respondent produced a lengthy and emotional response denying all of the above. RESPONDENT also produced an additional Response in which he argued:
I have just noticed that the complaint (WSI) in this case has used
information from my website potterybarn.org and clearly broke the terms and
conditions of the website useage.
On my terms and conditions of website use, it clearly states that no
one from Willams-Sonama inc my visit or use my website in any way before they
seek wrritten comfirmation from the owners
It claerly states that no page, image or information can be printed out
without written confirmation
They have clearly disreguarded my website conditions and terms of use
and used information and copywright materials in a effort to futher there case.
DISCUSSION
Introduction:
Clearly, being in a litigation with RESPONDENT,
COMPLAINANT can refer to whatever reference on the website of RESPONDENT. The Panelist is entitled to take into account
any reference to the website of RESPONDENT.
*
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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 alleges that it has registered the following marks with the
United States Patent and Trademark Office (“USPTO”): POTTERY BARN (Reg.
No. 2,021,077 issued February 12, 1996) and THE POTTERY BARN (Reg. No. 655,819
issued August 2, 1956; Reg. No. 976,194 issued January 8, 1974; Reg. No.
976,344 issued January 8, 1974; Reg. No. 959,383 issued May 22, 1973).
The Panel finds that these trademark registrations sufficiently demonstrate its rights in the mark pursuant to Policy ¶ 4(a)(i). See Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Nat. Arb. Forum Feb. 28, 2007) (“The Panel finds that COMPLAINANT has established trademark rights in the CLEAR BLUE marks through introduction of the certificates for its U.S. registration for those trademarks. The U.S. Trademark Act is clear that the certificate of registration on the Principal Register, as here, is prima facie evidence of the validity of the registered mark and the registrant's exclusive right to use the mark in commerce in on or in connection with the goods specified in the registration.”); see also Morgan Stanley v. Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence that COMPLAINANT has registered its mark with national trademark authorities. The Panel has determined that such registrations present a prima facie case of COMPLAINANT’s rights in the mark for purposes of Policy ¶ 4(a)(i).”).
Respondent
resides in the
As the <potterybarn.org> domain name contains COMPLAINANT’s entire registered POTTERY BARN mark and merely adds the generic top-level domain (“gTLD”) “.org” and removes the space between terms, the Panel finds that the contested domain name is identical to the mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the COMPLAINANT’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
Respondent does not dispute this element of the Policy.
COMPLAINANT must first make a prima
facie case that Respondent
lacks rights and legitimate interests in the disputed domain name under Policy
¶ 4(a)(ii), and then the burden shifts to Respondent
to show it does have rights or legitimate interests. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26,
2007) (finding that Policy ¶ 4(a)(ii) requires that
the COMPLAINANT must show that the Respondent
has no rights to or legitimate interests in the subject domain name and that
once the COMPLAINANT makes this showing, the burden of production shifts to the
Respondent to rebut the COMPLAINANT’s
allegations); see also SEMCO
Prods., LLC v. dmg world media (
COMPLAINANT alleges that Respondent
is not commonly known by the <potterybarn.org>
domain name, because the WHOIS information lists “Kurt Fees” as the registrant,
and nothing else suggests that Respondent
is commonly known by the domain name in dispute.
The Panel finds that Respondent
is not commonly known by the <potterybarn.org>
domain name.
Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a Respondent has no rights or legitimate interests in a disputed domain name where there is no evidence in the record indicating that the Respondent is commonly known by the disputed domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the Respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain name and there was no other evidence in the record to suggest that the Respondent was commonly known by the domain names in dispute).
COMPLAINANT alleges that before it contacted Respondent regarding its registration of the <potterybarn.org> domain name, Respondent did not have a website but simply an “Under Construction” page. After COMPLAINANT contacted Respondent, Respondent added information to the website.
The Panel finds that Respondent has not used the <potterybarn.org> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
COMPLAINANT also claims that Respondent offered to sell the <potterybarn.org> domain name to COMPLAINANT for $10,000 and that COMPLAINANT rejected this offer.
The Panel finds that Respondent’s willingness to sell the disputed domain name registration suggests that it has no rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the Respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use).
Respondent asserts that it has put a disclaimer on its website letting Internet users know that the content on its website at the <potterybarn.org> domain name is not affiliated with COMPLAINANT.
However, the Panel finds that the
use of a disclaimer is not enough for Respondent
to establish rights or legitimate interests under Policy ¶ 4(a)(ii). See DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the
domain name consists of the COMPLAINANT’s well-known trademark, does not counter
the expectation of Internet users that the domain name is sponsored by the COMPLAINANT); see also AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000)
(finding that since a disclaimer does not, and could not, accompany the domain
name, then the “domain name attracts the consumer’s initial interest and the
consumer is misdirected long before he/she has the opportunity to see the
disclaimer”).
Respondent offered to sell the disputed domain name registration to COMPLAINANT for more than $10,000.
The Panel finds that Respondent’s request for compensation
in excess of its out-of-pocket costs equals bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the Respondent’s offer to sell the domain
name for $2,000 sufficient evidence of bad faith registration and use under
Policy ¶ 4(b)(i)); see also Ingram Micro Inc v. Noton Inc.,
D2001-0124 (WIPO Mar. 6, 2001) (finding bad faith registration and use where
the Respondent attempted to
blackmail the COMPLAINANT into buying the disputed domain names with threats of
exposure to the media and adverse publicity to the COMPLAINANT’s employees and
customers).
COMPLAINANT also asserts that Respondent has used the <potterybarn.org> domain name to display links to various third-party websites, including websites selling electronics and adult-oriented materials.
The Panel finds that Respondent has attempted to take
advantage of the likelihood of confusion between the <potterybarn.org> domain name and COMPLAINANT’s POTTERY BARN
mark. It demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Reese v. Morgan, FA 917029 (Nat.
Arb. Forum Apr. 5, 2007) (holding that the Respondent
was taking advantage of the confusing similarity between the
<lilpunk.com> domain name and the COMPLAINANT’s LIL PUNK mark by using
the contested domain name to maintain a website with various links to
third-party websites unrelated to COMPLAINANT, and that such use for the Respondent’s own commercial gain
demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues Int’l Inc. v. This Domain Name My Be For
Respondent’s
conduct constitutes bad faith registration and use under Policy ¶ 4(b)(iv) as Respondent is diverting Internet users
seeking COMPLAINANT to its own website for commercial gain. See MySpace, Inc. v. Myspace Bot, FA
672161 (Nat. Arb. Forum May 19, 2006) (holding that the Respondent registered and used the <myspacebot.com>
domain name in bad faith by diverting Internet users seeking the COMPLAINANT’s
website to its own website for commercial gain because the Respondent likely profited from this
diversion scheme); see also
MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000)
(finding bad faith under Policy ¶ 4(b)(iv) where the Respondent registered a domain name confusingly similar to
the COMPLAINANT’s mark and the domain name was used to host a commercial
website that offered similar services offered by the COMPLAINANT under its
mark).
Despite Respondent’s use of a disclaimer on its website at the <potterybarn.org> domain name,
the Panel finds that this is not sufficient to avoid a finding of bad faith
registration and use under Policy ¶ 4(a)(iii). See Auxilium Pharms.,
Inc. v. Patel, FA 642141 (Nat.
Arb. Forum Apr. 6, 2006) (“Respondent’s
use of a disclaimer on its website does not mitigate evidence of bad faith
registration and use under Policy ¶ 4(a)(iii).”); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s
use of a disclaimer on its website is insufficient to avoid a finding of bad
faith. First, the disclaimer may be
ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel
initial interest confusion that is inevitable from Respondent’s actions. Such
confusion is a basis for finding a violation of COMPLAINANT’s rights.”).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <potterybarn.org> domain name be TRANSFERRED
from Respondent to COMPLAINANT.
Flip Petillion, Panelist
Dated: April 25, 2007
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