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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. d/b/a Pottery Barn v. John Zuccarini d/b/a Country Walk
Case No. D2002-0582
1. The Parties
Complainant in this administrative proceeding is Williams-Sonoma, Inc. d/b/a Pottery Barn, a corporation organized and existing under the laws of the State of California, with a principal place of business at 3250 Van Ness Avenue, San Francisco, California 94109, United States of America ("U.S.A.") The Complainant is represented in this proceeding by Deborah Klaus, Esq. and Nancy Himmelfarb, 3250 Van Ness Avenue, San Francisco, California 94109, U.S.A.
Respondent in this proceeding is John Zuccarini d/b/a Country Walk, whose address is 957 Bristol Pike, Suite D-6 Andalusia, Pennsylvania 19020, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <poterybarn.com>.
The registrar for the disputed domain name is Computer Services Langenbach GMBH d/b/a Joker.com, Rathausufer 16, 40213 Duesseldorf, Germany.
3. Procedural History
This Complaint is to be resolved under the Uniform Policy for Domain Name Dispute Resolution (the "Policy") and Rules (the "Rules") approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Center", the "Supplemental Rules").
The Complaint was filed on June 22, 2002, by e-mail, and on June 27, 2002, in hard copy. On June 25, 2002, the Center sent a Request for Registrar Verification to the registrar of the disputed domain name, pursuant to which the Center received a verification on June 26, 2002, that the disputed domain name was registered to the Respondent, and that the registration is subject to the Policy.
In accordance with Paragraph 2 (a) of the Rules, the Center notified the Respondent on July 1, 2002, of the filing of the Complaint and the commencement of the Administrative Proceeding on that same date. This notice advised the Respondent that Respondent had until July 21, 2002, to respond to the Amended Complaint. No response was received on or before that date, nor has any response been received as of the date of this Administrative Decision. On July 22, 2002, the Center notified the Respondent of its failure to comply with the deadline for responding to the Complaint and that Respondent was in default in this case.
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 26, 2002, and the Center proceeded to appoint the Panel on that same day. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
4. Factual Background
For many years Complainant has been a well-known American retail sales company, trading in a variety of consumer products. Complainant owns registered trademarks in "The Pottery Barn" and "Pottery Barn" in the United States and other countries (collectively the "Complainant Trademark"). In addition, Complainant has registered and uses the domain name, <potterybarn.com>, in selling consumer goods.
Respondent is listed as the registrant of the disputed domain name. The record of registration was created on December 13, 1999.
5. The Parties’ Contentions
Complainant operates over 95 retail stores throughout the U.S. and 3 retail stores in Canada under the "Pottery Barn" service mark and brand concept. Various houseware products are offered through Complainant’s "Pottery Barn" stores, including products bearing the "Pottery Barn" trademark. The Respondent receives several hundreds of millions of dollars in annual revenues from sales of products under that mark.
Complainant has registered trade and service marks in the names "The Pottery Barn" and "Pottery Barn", in many countries throughout the world. The Complainant Trademark has been in use since 1956, long before Respondent registered the disputed domain name.
Complainant also has a web site, <potterybarn.com>, through which it sells a variety of products and goods.
Respondent’s domain name is identical or confusingly similar to the Complainant Trademarks. The disputed domain name is visually the same as Complainant's trademark, "Pottery Barn", which is put at risk because of Complainant’s inability to fully control its mark on the internet.
The Complainant Trademark is an arbitrary name, as Complainant's business is not limited to the sale of pottery in barns. Thus, the name is distinctive, unique and one of the most recognized retailing trademarks in North America.
Respondent has no rights or legitimate interests in respect of the domain name. Respondent is not authorized to use the Complainant Trademark. Respondent is taking advantage of consumers’ known disposition to misspell or mistype domain names to divert Internet traffic to several other web sites, all of which offer sexually-oriented adult material, gambling or other services.
The Respondent has never been commonly known by the disputed domain name.
The Respondent registered the <poterybarn.com> domain name in bad faith. Respondent had to be aware of the Complainant Trademark due to its national renown in the United States, Respondent's country of address. Respondent registered the name to confuse internet users in order to divert internet traffic away from Complainant's web site to other sites for commercial gain.
Respondent did not file a response.
The Center forwarded a copy of this Complaint to Respondent by courier and e-mail and sent Respondent a Notification of Respondent Default by e-mail and courier. In light of these facts, the Panel is convinced that Respondent has been duly notified of these proceedings and that Respondent has suffered no denial of due process.
6. Discussion and Findings
In order for Complainant to prevail in these proceedings and have the disputed domain name <poterybarn.com> transferred to it, Complainant must under paragraph 4(a)(i-iii) of the Policy prove that:
- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Panel finds that Complainant owns many registrations of the trademark "Pottery Barn" or "The Pottery Barn" in the United States (e.g., U.S. Registration No. 2,021,077 dated December 3, 1996, in international class 42 for retail store services, and No. 2,022,234, dated December 10, 1996, in the same international class with design also for retail store services) as well as similar trademarks registered in Canada, Korea, Mexico and many other countries (Exhibits C and D to the Complaint). Complainant's rights in those trademarks arose significantly prior to Respondent's registration of the disputed domain name.
The disputed domain name <poterybarn.com> differs from Complainant's trademark, "Pottery Barn", only in that the space between the words is missing, the gTLD ".com" is added, and there is one less "t". Panels in other cases decided under the Policy have disregarded the elimination of spaces between words in the determination of identity between a trademark and a domain name (see for example Louis Vuitton Malletier v. Enrico Villa, WIPO Case No. D2000-0722 (October 13, 2000) and Columbia Sportswear Company v. Mahlon Keeler, WIPO Case No. D2000-0206 (May 16, 2000)). Also, these panels have held consistently that the inclusion of a gTLD such as ".com" is without legal significance in determining identity between marks and domain names (Ticketmaster Corporation v. Discover Net, Inc., WIPO Case No. D2001-0252 (April 9, 2001) and Treeforms, Inc. v. Cayne Industrial Sales, Corp., NAF FA95856 (December 18, 2000)).
Finally, the absence of one "t" from "pottery" to create "potery" does not reduce the confusion that would arise among internet users between the disputed domain name and the Complainant Trademark. The difference in computer entry between the two could result easily from a simple typographical error, presenting a classic case of what has been referred to as "typo-squatting." In many similar cases, WIPO panels have found at least confusing similarity if not identity between the trademark and domain name in question (see Pfizer Inc. v. Phizer's Antiques and Robert Phizer, WIPO Case No. D2002-0410 (July 3, 2002) and The Nasdaq Stock Market, Inc. v. Nsdaq.com, Nasdq.com and Nasaq.com, WIPO Case No. D2001-1492 (February 27, 2002)).
Accordingly, the Panel finds that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
No Rights or Legitimate Interests
The record does not suggest in any way that Respondent has received permission, consent or a license from Complainant to use the Complainant Trademark.
Alternatively, there are three specific ways in which it could be demonstrated to the Panel that Respondent has rights or legitimate interests in the disputed domain name per paragraph 4(c) of the Policy. However, no evidence has been presented to the Panel to show that Respondent is commonly known by the domain name (paragraph 4(c)(ii)). Furthermore, there is nothing before the Panel tending to show that Respondent, either before or after notice of the commencement of this proceeding, is using or has prepared to use the disputed domain name in connection with a bona fide offering of goods or services (paragraph 4(c)(i)).
On the contrary, Complainant contends that Respondent is taking advantage of consumers’ known disposition to misspell or mistype domain names to divert internet traffic from Complainant's web site through the disputed domain name to several other web sites, all of which offer the consumer sexually-oriented adult material, gambling or like products or services. In Exhibit I of the Complaint, Complainant has provided the Panel with some evidence, in the form of a copy of web site material found at the disputed domain name, to substantiate this contention. Since Respondent offers no rebuttal to this assertion, the Panel concludes that it is essentially correct and that Respondent has failed to meet the legitimate interest criterion listed in paragraph 4(c)(iii) of the Policy.
While paragraph 4(c) of the Policy is not exhaustive of the manner in which a respondent may show rights or legitimate interests in a disputed domain name, the Panel will exercise the discretion given it under the Policy to interpret Respondent's lack of response in this case to find that there is no other basis upon which Respondent can establish such rights or interests.
Thus, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Given the national renown of the Complainant Trademark in the United States, the Panel concludes that it is a virtual certainty that Respondent, as a citizen of that country, is familiar with the Complainant Trademark. This conclusion provides a basis for Complainant's contention that, by using a domain name so similar to the Complainant Trademark and Complainant's own registered domain name, <potterybarn.com>, Respondent is knowingly creating the likelihood of confusion with the intent to attract internet users for Respondent's commercial gain. That claim is supported by the evidence referred to above, which suggests that internet users are immediately sent to other "tawdry" commercial web sites when accessing the disputed domain name. Furthermore, that claim, if accepted by the Panel, would compel a finding of bad faith registration and use per paragraph 4(b)(iv) of the Policy. As Respondent has furnished the Panel with no evidence to contradict Complainant's claim on this issue, the Panel concludes that it is most likely to be true.
In line with the foregoing, the Panel finds that Complainant has sustained its burden of proof to show that the domain name was registered and is being used in bad faith.
The Panel finds that the disputed domain name, <poterybarn.com>, is confusingly similar to Complainant’s "Pottery Barn" trade and service marks. The Panel also finds that the Respondent has no rights or legitimate interests in the disputed domain name. Finally, the Panel finds that Respondent registered and is using the disputed domain name in bad faith because Respondent's primary intent in registration and use of that name was to benefit commercially from the likelihood of confusion with the Complainant Trademark.
In accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the disputed domain name, <poterybarn.com>, be transferred from Respondent, John Zuccarini d/b/a Country Walk, to Complainant, Williams-Sonoma, Inc. d/b/a Pottery Barn.
Dennis A. Foster
Dated: August 9, 2002