Williams-Sonoma, Inc. v Abdelrhman setoot

WIPO Case No. D2025-1229

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. Abdelrhman setoot

Case No. D2025-1229

1. The Parties

The Complainant is Williams-Sonoma, Inc., United States of America, represented by Hanson Bridgett LLP,

United States of America.

The Respondent is Abdelrhman setoot, Egypt.

2. The Domain Name and Registrar

The Disputed Domain Name <potterybarnstore.com> is registered with Hostinger Operations, UAB (the

“Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 25, 2025.
On March 26, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On March 27, 2025, 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 (Domain Admin, Privacy Protect, LLC (PrivacyProtect.org)) and
contact information in the Complaint. The Center sent an email communication to the Complainant on March
27, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

April 1, 2025.

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 the Respondent of the Complaint, and the proceedings commenced on April 3, 2025. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2025. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2025.

page 2

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 8, 2025. 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

The Complainant, Williams-Sonoma Inc., is a Delaware corporation, with offices in San Francisco, California. The Complainant is a home goods retailer and the parent company of Pottery Barn, a home furnishing store chain and e-commerce company founded in 1949.

The Complainant is the owner of inter alia the following trademarks:

- POTTERY BARN, United States word mark No. 6389622 registered on June 15, 2021, in classes 14, 18, 25, 26, 28, and 31; and

-

20, 21, 24, 27, and 35. , United States mark No. 6130848 registered on August 18, 2020 in classes 3, 4, 6, 8, 11, 16,

The Complainant is the registrant of the domain name <potterybarn.com>, which is associated to a website, advertising furniture under the name Pottery Barn.

The Disputed Domain Name was registered on December 12, 2024. According to the Complainant’s evidence, the Disputed Domain Name resolves to a website displaying the term “POTTERY BARN”, pictures of furniture and text explaining that Pottery Barn “is a premium furniture store offering designs that combine elegance and quality” and “is present in Saudi Arabia to meet the needs of every home.” The Disputed Domain Name currently resolves to a website, featuring the same pictures and text in Arabic script and the term “POTTERY BARN” in Latin script. The website also displays a phone number and “[...]@email.com” as an email address.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Notably, the Complainant contends that the Disputed Domain Name is confusingly similar to the
Complainant’s POTTERY BARN trademark as it incorporates the trademark plus the non-distinctive term
“store”.

The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name as the Respondent is not known by the Disputed Domain Name, nor could it have developed any common law trademark rights in the Complainant’s senior and well-known POTTERY BARN trademark. According to the Complainant, the Respondent is not affiliated with the Complainant and has not received any authorization or license to use the POTTERY BARN trademark or include it in a domain name. The Complainant also claims that the Respondent uses the POTTERY BARN trademark in the Disputed Domain Name to divert customers to the Respondent’s webstore selling other products, thereby not making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. According to the Complainant:

page 3

- the Respondent registered and is using the Disputed Domain Name in a deliberate attempt to direct

third parties looking for the Complainant to its website through deceit by impersonating the Complainant and
its well-known Pottery Barn brand;

- the Respondent was clearly aware of the Complainant and its prior trademark rights, as the reputation

and renown of the Complainant was instrumental to the Respondent’s deceptive scheme, and registered a
nearly identical domain to the Complainant’s <potterybarn.com> domain name and connected
“ website; and

- the Respondent’s website prominently displays the Complainant’s POTTERY BARN mark, tending to

mislead consumers into believing they have reached the Complainant’s authentic website, when in reality the
Respondent appears to be selling third-party goods.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The entirety of the POTTERY BARN mark is reproduced within the Disputed Domain Name. Accordingly,
the Disputed Domain Name is confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “store”) may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Disputed Domain Name and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

page 4

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name such as those enumerated in the Policy or otherwise.

Fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner. The correlation between a domain name and the complainant’s mark is often central to this inquiry.

Beyond looking at the domain name and the nature of any additional terms appended to it, UDRP panels assess whether the overall facts and circumstances of the case, and the absence of a response, support a fair use or not. WIPO Overview 3.0, sections 2.5.2 and 2.5.3.

The Disputed Domain Name currently resolves to a website displaying the Complainant’s POTTERY BARN trademark, seemingly offering goods that are similar to the Complainant’s own offering. Based on the overall facts and circumstances of the case, including the composition of the Disputed Domain Name, the Panel finds that this does not amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Disputed Domain Name. Moreover, the Respondent does not accurately and prominently disclose its (absence of) relationship with the Complainant. As a result, the Respondent fails the so-called “Oki Data test” for legitimate resellers, distributors or service providers of the Complainant’s goods or services.

The Respondent had the opportunity to demonstrate his rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Based on the available record, the Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In the present case, the Panel notes that the Respondent has used the Disputed Domain Name displaying the Complainant’s POTTERY BARN trademark, pictures of products that are similar to the Complainant’s offering, and a seemingly fictitious email address. In the Panel’s view, the circumstances of this case indicate that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark and obtaining personal information from visitors. WIPO Overview 3.0, section 3.1.4.

In the present case, the Panel finds that the Respondent must have been aware of the Complainant and its trademark rights when it registered the Disputed Domain Name as:

- the Complainant’s POTTERY BARN trademark was registered prior to the Disputed Domain Name

and has acquired a reputation; and

- the Disputed Domain Name resolves to a website displaying the Complainant’s POTTERY BARN

trademark, and seemingly offering similar products.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the Disputed Domain similar to the Complainant’s own offering.

page 5

Finally, the Respondent did not formally take part in the administrative proceedings. According to the Panel, this affirms the Panel’s finding of the Respondent’s bad faith.

Based on the available record, the Panel finds that the Complainant has established the third element 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 <potterybarnstore.com> be transferred to the Complainant.

/Flip Jan Claude Petillion/
Flip Jan Claude Petillion
Sole Panelist
Date: May 22, 2025