Williams-Sonoma, Inc. v carrousel Chavez

WIPO Case No. D2025-0319

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. carrousel Chavez

Case No. D2025-0319

1. The Parties

The Complainant is Williams-Sonoma, Inc., United States of America (“United States”), represented by

Hanson Bridgett LLP, United States.

The Respondent is carrousel Chavez, United States.

2. The Domain Name and Registrar

The disputed domain name <potterybarnusa.shop> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2025.
On January 28, 2025, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On January 28, 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 (REDACTED FOR PRIVACY, See PrivacyGuardian.org) and
contact information in the Complaint. The Center sent an email communication to the Complainant on
January 28, 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
February 1, 2025.

The Center verified that the Complaint together with 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 February 5, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 25, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 26, 2025.

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The Center appointed Steven Auvil as the sole panelist in this matter on March 4, 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 is one of America’s premiere home goods retailers and manufacturer whose well-known brands include Williams Sonoma, Pottery Barn, West Elm, and Rejuvenation. The Complainant sells internationally through retail stores, catalogs, and online websites. The Complainant’s business, Pottery Barn, began in 1949 and has continuously offered a full line of in-house designed and/or exclusive products for the home, from furniture to rugs, bedding, and accessories.

Complainant owns over 400 trademark registrations for its POTTERY BARN mark in approximately 30
jurisdictions worldwide, including the United States, Mexico, European Union, United Kingdom, Australia,
China. The POTTERY BARN trademark registrations include United States Registration Nos. 6389622,
registered June 15, 2021, 6130848, registered August 18, 2020, and 2021077, registered December 3,
1996.

The Complainant also operates over 200 POTTERY BARN retail stores both in the United States and internationally, and a direct mail business for the distribution of POTTERY BARN catalogs. The Complainant further own e-commerce sites including “ “ and “

According to the Complaint, the disputed domain name was registered on January 21, 2025, in an attempt to
induce Internet users into believing that it is somehow affiliated with the Complainant and a source for the
Complainant’s genuine POTTERY BARN goods. The disputed domain name website includes the

Complainant’s copyrighted images and listings for the Complainant’s products at a deeply discounted price.

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.

The Complainant first contends that the disputed domain name is confusingly similar to its POTTERY BARN name that they are accessing a specific geographic version of the Complainant’s “ website. Further, the disputed domain name resolves to a website that attempts to mirror the Complainant’s “ website, which indicates that this misrepresentation and implication is intentional.

mark. The Complainant alleges that the disputed domain name incorporates the entirety of the
Complainant’s POTTERY BARN mark and merely adds the geographic term “usa” and generic Top-Level
Domain (“gTLD”) “shop.” The Complainant contends that “usa” is a well-known abbreviation for the United

The Complainant next alleges that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not known by the disputed domain name, nor is the Respondent affiliated with the Complainant. The Complainant has not licensed or permitted the Respondent to use the POTTERY BARN mark, any of the Complainant’s other marks, or any domain name incorporating the Complainant’s POTTERY BARN mark.

Finally, the Complainant contends that the Respondent registered and has used the disputed domain name in bad faith. The Complainant alleges that the Respondent registered and used the disputed domain name

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in a deliberate attempt to attract Internet users looking for the Complainant to the disputed domain name’s authentic website of the Complainant.

website through deceit by impersonating the Complainant and its well-known POTTERY BARN brand. The
Complainant alleges that the Respondent was aware of the Complainant and the Complainant’s rights in the
POTTERY BARN trademarks and brand. The Respondent registered a nearly identical domain name to the
Complainant’s “ website that incorporates the entirety of the Complainant’s POTTERY
BARN mark. Further, the disputed domain name website prominently displays the Complainant’s POTTERY

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not answer the Complainant’s contentions in the Complaint or the amended Complaint.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following to obtain relief:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service mark in which

the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

In view of the Respondent’s failure to submit a Response, the Panel is entitled to accept as true the allegations set forth in the Complaint (unless the evidence is clearly contradictory), and to derive reasonable inferences from the evidence presented. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

Based on the foregoing guidance, the Panel makes the following findings and conclusions based on the allegations and evidence contained in the Complaint and amended Complaint, and reasonable inferences drawn from the evidence presented.

A. Identical or Confusingly Similar

It is well established that the first element of the Policy serves 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.

The evidence submitted by the Complainant supports the conclusion that the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. The Complainant owns numerous registered trademarks incorporating the term POTTERY BARN. WIPO Overview 3.0, section 1.2.1.

The evidence also supports the conclusion that the disputed domain name is confusingly similar to the Complainant’s POTTERY BARN mark. As set forth in WIPO Overview 3.0, section 1.7, when the entirety of a mark is reproduced within the disputed domain name, or “at least a dominant feature of the relevant mark is recognizable in the domain name,” the disputed domain name is deemed confusingly similar to the mark for the purposes of the Policy. Further, “[w]here the relevant trademark is recognizable within the disputed

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domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or
otherwise)” does not prevent a finding of confusing similarity. WIPO Overview 3.0, section 1.8.

Syngenta Participations AG v. Syngenta Agrichemical Company, Syngenta Agrichemical Company, WIPO Case No. D2022-3308.

Here, the disputed domain name is confusingly similar to the Complainant’s POTTERY BARN mark. The and merely added the geographic term “usa.” The addition of “usa” does not prevent a finding of confusing similarity.

Additionally, as set forth in section 1.11.1 of the WIPO Overview 3.0, the applicable generic Top-Level Domain (“gTLD”) (e.g., “.com”, “.site”, “.info”, “.shop”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. As such, the use of “.shop” gTLD in the disputed domain name has no bearing on the confusing similarity analysis.

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. Such circumstances include:

(i) before any notice of the dispute, the respondent used, or prepared to use, the disputed domain name or a
name corresponding to the disputed domain name in connection with a bona fide offering of goods or

services;

(ii) the respondent (as an individual, business, or other organization) is commonly known by the disputed

domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for

commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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.” As such, where a complainant makes out a prima facie case that the respondent
lacks rights or legitimate interests in a disputed domain name, 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 evidence, the complainant is deemed to have satisfied the second element.
WIPO Overview 3.0, section 2.1.

WIPO Overview 3.0, section 2.13.1.

Having reviewed the evidence and arguments of record, the Panel finds that the Complainant has disputed domain name in an attempt to pass itself off or impersonate the Complainant. Panels have held that the use of a domain name for illegitimate activity, such as impersonation/passing off, can never confer rights or legitimate interests on a respondent.
established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain
name. In addition to the confusing similarity between the disputed domain name and the well-known

The Respondent has not attempted to rebut the Complainant’s prima facie showing; in fact, the Respondent has not come forward with any evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise. Nor is there evidence of record that the Complainant licensed or otherwise authorized the Respondent’s use of the POTTERY BARN mark or the dominant portion thereof in a domain name, or that the Respondent has any affiliation, association, sponsorship, or connection with the Complainant.

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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 non-exclusive circumstances that, if found by the Panel to be present, is evidence of the registration and use of a domain name in bad faith. Such circumstances include, among others, where “the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor,” and where “by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.” WIPO Overview 3.0, section 3.1.

Additionally, section 3.2.1 of the WIPO Overview 3.0 provides that “[p]articular circumstances panels may take into account in assessing whether the respondent’s registration of a domain name is in bad faith include: (i) the nature of the domain name (e.g., a typo of a widely-known mark, or a domain name incorporating the complainant’s mark plus an additional term such as a descriptive or geographic term, or one that corresponds to the complainant’s area of activity or natural zone of expansion); [...] (vi) a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or (viii) other indicia generally suggesting that the respondent had somehow targeted the complainant.”

In the present case, the Panel concludes that the Respondent has registered and used the disputed domain name in bad faith. First, the disputed domain name incorporates the entirety of the Complainant’s registered and well-known POTTERY BARN mark with an additional term “usa,” which suggests that the site serves

customers of the Complainant in the United States. Second, the Panel finds that the Respondent has
engaged in using the disputed domain name to impersonate the Complainant and mislead its customers into

believing it is affiliated or doing business with the Complainant.

Considering this and other circumstances, including the failure of the Respondent to respond to the
Complaint, the Panel finds that the Respondent knew of the Complainant’s POTTERY BARN mark at the
time of registering the disputed domain name and endeavored to unfairly capitalize on the mark for
commercial gain. The Panel therefore concludes that the disputed domain name was registered and is being

used in bad faith.

The Panel therefore 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 <potterybarnusa.shop> be transferred to the Complainant.

/Steven Auvil/ Steven Auvil Sole Panelist Date: March 18, 2025