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Williams-Sonoma, Inc. v. Williams Onoma

WIPO Case No. D2001-0462

Outcome
Transfer
Domain names
williamsonoma.com
Complainant
Williams-Sonoma, Inc.
Respondent
Williams Onoma
Panelist
Gunnar Karnell
Registrar
BulkRegister.com, 7 East Redwood Street, Third Floor, Baltimore, MD21202, U.S.A., on October 10, 2000
Decided
05 Jun 2001
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0462.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. Williams Onoma

Case No. D2001-0462

1. The Parties

The Complainant is Williams-Sonoma Inc., a corporation organised and existing

under the laws of the State of California with its principal business located

at 3250 Van Ness Avenue, San Francisco, California 94109, U. S. A.

The Respondent is, according to contact details from the Registrant’s WHOIS

database, Williams Onoma, Sirenevii Bylvar 23, St Petersburg, RU 201332, Russia.

2. The Domain Name

The domain name at issue is <williamsonoma.com>, registered with BulkRegister.com,

7 East Redwood Street, Third Floor, Baltimore, MD21202, U.S.A., on October 10,

2000.

3. Procedural History

A complaint was submitted electronically to the World Intellectual Property

Organization Arbitration and Mediation Center (the "WIPO Center")

on March 30, 2001. Its receipt was acknowledged to the Complainant

by the WIPO Center on April 3, 2001, and it was there received in hardcopy form

on April 5, 2001. On the day before, the WIPO Center requested and

received a Registrar Verification issued by BulkRegister. Payment of the administration

fee was duly received. After Formal Compliance Review, verifying that the complaint

satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution

Policy (the "Uniform Policy"), the Rules for Uniform Domain Name Dispute

Resolution Policy (the "Rules") and the World Intellectual Property

Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"), a Notification of Complaint and Commencement

of Administrative Proceeding to the parties and BulkRegister was issued on April 9, 2001,

followed by a Response Default Notification on April 30, 2001.

The Complainant chose to have the dispute decided by a single-member Administrative

Panel. There having been no response to the complaint, the Panel was properly

constituted on May 8, 2001, the formal date set for commencement of this administrative

proceeding. It was founded on a Statement of Acceptance and Declaration of Impartiality

and Independence dated May 7, 2001. A Notification of Appointment of Administrative

Panel and Projected Decision Date was properly issued on May 8, 2001, indicating

as single panelist Mr. G. Karnell.

When reviewing the case file the Panel noticed that the Respondent had been

incorrectly named as "Serenevii Bylvar 23", whereas, according to

the Registrar Verification, the registrant is "Williams Onoma", "Serenevii

Bylvar 23" being the street address of the registrant. The date scheduled

for the issuance of the Panel’s decision had originally been set to be May 21,

2001. Now, the Panel was obliged to request the Complainant to amend its complaint

on May 15 at the latest. Accordingly, the Panel issued on May 11, 2001, a Procedural

Order, with a request as mentioned and instructions to the Complainant, the

WIPO Center and the Respondent about the further handling of communicative matters

and resetting, pursuant to Rule 10 (c), the deadline for issuing a decision

in the case to June 16, 2001. The Order, together with appropriate

documents, was duly expedited to the Complainant and the Respondent. The latest

day for a response was set to be June 3, 2001.

The Complainant duly amended its complaint as requested on May 14, 2001. This

First Amended Complaint was transmitted to the Respondent and to the Registrar

by e-mail from the Complainant on May 14, 2001, and further communicated in

accordance with the Rules on May 15, 2001. It contains also some additions to

the Legal Grounds mentioned in the initially registered complaint. These parts

have been included in the summary of Complainant’s contentions under 5. A. here

below.

4. Factual Background

In accordance with Paragraph 3 (b) (xiii) of the Rules, the Complainant has

agreed to submit, only with respect to any challenge that may be made by the

Respondent to a decision by the Administrative Panel to transfer or cancel the

domain name that is the subject of its complaint, to the jurisdiction of the

courts where the Registrar has its principal office.

The Registrar Verification states that the Uniform Policy applies to the domain

name at issue.

5. Parties’ Contentions

A. Complainant

The Respondent’s domain name <williamsonoma.com> is virtually identical

with Complainant’s mark WILLIAMS-SONOMA. The sole differences are the gTLD .com

and that Respondent’s domain name does not have an "s" at the end

of "WILLIAM" and a hyphen between the two words.

WILLIAMS-SONOMA is the combination of the founder’s of WILLIAMS-SONOMA Inc.

last name, Williams, and the location where the company was founded, Sonoma.

The combination has been registered for seven trade marks and service marks

in the U. S. and a number of registrations of the same mark exist in Australia,

Hong Kong, Japan, Korea, Singapore, the European Community and New Zealand.

It is also the owner of the domain name registration for <williams-sonoma.com>.

The company operates some 200 retail stores in the U.S., offering mainly houseware

and kitchenware products, under WILLIAMS-SONOMA signs. Products sold carry the

trademark. There are catalogues about products of the kind, marked WILLIAMS-SONOMA,

which are sent to ca. 2.5 million U. S. homes every month. Complainant operates

a web site on which it sells kitchenware and houseware via the Internet under

the mark. Respondent’s possession of its domain name prevents the Complainant

from controlling its mark on the Internet.

The Respondent has no rights or legitimate interest in the domain name <williamsonoma.com>.

The WILLIAMS-SONOMA mark is arbitrary, distinctive and unique, subject to great

consumer awareness. The Respondent has not acquired any rights of use to the

mark by licensing or else. By choosing the domain name the Respondent has sought

to create an impression of association with the Complainant. Since no authorised

association exists, Respondents interest in its domain name cannot be legitimate.

The Respondent takes advantage of consumers’ known disposition to misspell domain

names to divert Internet traffic by hyperlinking the www.williamsonoma.com domain

address to a site located at the domain name www.centerfind.com/food which offers

commercial services such as credit card enrolment, domain registration and sports

betting, thereby taking advantage of domain name misspellings to divert traffic

to a site where commercial gain can be made. The Respondent has not been commonly

known by the mark or domain name. Respondent does not have any rights or legitimate

interests in the domain name despite the fact that its name as registered is

Williams Onoma. The hyperlinked site www.centerfind.com/food/ and its services

bear no relation to the Respondent’s name.

The address of the Respondent has figured in an earlier domain name case, before

the National Arbitration Forum on October 24, 2000, Claim Number: FA 0009000095647,

MARRIOTT INTERNATIONAL, Inc. v. (as indicated by the Complainant) Sirenevii

Bylvar 23. In that case the name of the Respondent was Polanski. In that case

like in the present one the Respondent used its domain name, <mariottrewards.com>,

by routing Internet traffic to commercial web sites that promote third party

companies which provide diverse services. <mariottrewards.com>,was, like

in the present case, registered with BulkRegister. The domain name was considered

to be nearly identical to the famous marks MARRIOTT and MARRIOTT REWARDS and

to be confusingly similar to other MARRIOTT marks and domain names. It was found

to have been registered and used in bad faith upon a finding of no rights or

legitimate interests on the part of the Respondent. Furthermore the Complainant

has also raised a complaint under ICANN rules related to the domain name WILLIAM-SONOMA.COM

– Respondent again Polanski – WIPO Case No.

D2001-0236 – also a case about hyperlinking to www.centerfind.com/foo[d]/.

What is more, the administrative contact for www.williamsonoma.com, Solncev

Michail, was administrative contact in WIPO

Case No. D2000-1336, equally relating to hyperlinking intended to suggest

an affiliation between Respondent’s and Complainant’s sites.

The Respondent has registered the domain name <williamsonoma.com> and

uses it in bad faith. It is not possible to conceive of a plausible circumstance

in which the Respondent could legitimately use the domain name. The Respondent

could not have chosen its domain name without prior knowledge of Complainant’s

mark. The Respondent has attempted to attract, for commercial gain, Internet

users to its web site and other on-line location, by creating a likelihood of

confusion of the Complainant’s mark as to the source, sponsorship, affiliation

or endorsement of Respondent’s web site or location. The Respondent maintains

a hyperlink site under its domain name, which exploits consumer misspelling

of Complainant’s mark to misdirect web traffic to another online commercial

location. Also, after leaving the Centerfind website, a browser receives several

"spam" attachments or pop-ups of various female celebrities and other

promotional material, continuing even after signing off the Internet. The Centerfind

site also promotes links to sites for shopping, food and recipes, such goods

and services being similar to those offered by Williams-Sonoma at its web site.

The Respondent appears to have been engaged in similar behaviour in the past,

having thereby established a "prior history of registering domain names

consisting of misspelling of widely-known marks".

The Complainant has requested, in accordance with Paragraph 4 i. of the Uniform

Policy, that the Administrative Panel transfer the domain name <williamsonoma.com>

to the Complainant.

B. Respondent

There has been no response from the Respondent.

6. Discussion and Findings

6.1 The domain name <williamsonoma.com> is confusingly similar to the

registered trade marks WILLIAMS-SONOMA, notwithstanding the added gTLD .com

and the fact that the name contains a hyphen between its two words and does

show only one S where the trade marks show two, separated by the hyphen.

6.2 Respondent has not answered to the complaint, neither when sent to its

address with no indication of the Respondents name nor within the 20 days from

the formal notification given to the Respondent in person, as indicated by the

Registrar, on account of the Procedural Order of May 11, 2001, and the communication

of the First Amended Complaint. The Respondent’s name has not been evidenced

to belong to a person carrying that name, nor to any commercial enterprise named

Williams Onoma. The Panel finds reason to believe that the name of the Respondent

has been chosen just in order to render credibility to its registration and

to make possible an intended use, such as alleged by the Complainant, of the

domain name. Regarding any possible rights and legitimate interests relating

to the domain name the Respondent has failed to shown evidence of such rights

or interest. The Panel concludes that there are none.

6.3 The Panel concludes from Complainant’s account of earlier cases related

to the business sphere of the Respondent that the differences in names under

which the domain name registrations in the cases have taken place shall be disregarded

when deciding on the issue of bad faith in the present case.

The decision in the MARRIOTT case was based upon a complaint notified to the

address of the Respondent in the present case on September 26, 2000, with a

deadline for response set to October 16, 2000. The notification must have reached

the Respondent’s address by the time when it had its present domain name registered.

Other cases adduced by the Complainant let believe that the Respondent has

acted and acts within a setting, local and personal, characterised by systematic

behaviour in bad faith.

The Panel does not believe that the Respondent has chosen its domain name without

knowledge of WILLIAMS-SONOMA. The Respondent has registered and used its domain

name in an intentional attempt to attract for commercial gain Internet users

to its web site and by hyperlink to another commercial online location (Centerfind),

with effects that must be considered to be undesired by anyone attempting to

reach a company site of WILLIAMS-SONOMA, Inc., although some goods and services

rendered may be similar. Such similarity will, moreover, in itself contribute

to the effect of denigrating the trade mark. It creates such a likelihood of

confusion with the Complainants mark as is mentioned under 4. b. (iv) of the

Uniform Policy.

In view of its findings here above and the content of the First Amended Complaint

the Panel disregards the circumstance that the Complainant, with evident knowledge

when citing the MARRIOTT case in its complaint that the Respondent in that case

was not, as the Complainant there indicated, Sirenevii Bylvar 23 (thus the same

Serenevii Bylvar 23 as was initially indicated in the in the present case),

but Polanski, thereby initially created the risk of an incorrect finding by

the Panel about a greater similarity between the cases than was warranted by

the facts.

6.4 The Administrative panel concludes that all elements mentioned in the Uniform

Policy under article 4 a. (i)-(iii) are present in the case.

7. Decision

The Administrative Panel requires that the registration of the domain name

<williamsonoma.com> be transferred to the Complainant.

Gunnar Karnell

Panelist

Dated: June 5, 2001

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