Williams-Sonoma, Inc. v Kai Shu Ni Female, xu haijing, xu haijing, Nichole

WIPO Case No. D2025-1191

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. Kai Shu Ni Female, xu haijing, xu haijing, Nichole
Kleist

Case No. D2025-1191

1. The Parties

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

Bridgett LLP, United States.

Respondents are Kai Shu Ni Female, United States, xu haijing, xu haijing, China, and Nichole Kleist, United

States.

2. The Domain Names and Registrars

The disputed domain names <potterybarn-usa.shop> and <potterybarnus.com> are registered with
NameSilo, LLC (“Registrar 1”). The disputed domain name <potterybarn-storehouse.shop> is registered with

PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar 2”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2025. On March 24, 2025, the Center transmitted by email to the Registrar 1 a request for registrar verification in connection with the disputed domain names <potterybarn-usa.shop> and <potterybarnus.com>. On March 24, 2025, Complainant became aware of <potterybarn-storehouse.shop> and requested to add an additional

disputed domain name, for which it filed an amended Complaint on March 27, 2025. On March 27, 2025, the disputed domain name. On March 25 and 27, 2025, the Registrars transmitted by email to the Center their verification responses disclosing registrants and contact information for the disputed domain names which differed from named Respondents (Domain Administrator, See PrivacyGuardian.org, xu haijing, xu haijing) and contact information in the Complaint. The Center sent an email communication to Complainant on March 27, 2025 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrars, requesting Complainant to either file separate complaint(s) for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. Complainant filed an amended Complaint on April 1, 2025.

page 2

The Center verified that the Complaint together with the amended Complaints 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 Respondents of the
Complaint, and the proceedings commenced on April 2, 2025. In accordance with the Rules, paragraph 5,
the due date for Response was April 22, 2025. Respondents did not submit any response. Accordingly, the
Center notified Respondents’ default on April 24, 2025.

The Center appointed Colin T. O'Brien as the sole panelist in this matter on May 1, 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

Complainant launched its Pottery Barn business over 75 years ago, in 1949, and has since continuously offered a full line of in-house designed and/or exclusive products for the home, from furniture to rugs, bedding, and accessories. Complainant operates over 200 retail stores in the United States and other countries and has a direct mail business that has distributed millions of catalogs; and also operates websites at <potterybarn.com>, <potterybarnkids.com>, and <potterybarnteen.com>.

Complainant owns over 400 trademark applications and registrations for its POTTERY BARN Mark in approximately 30 jurisdictions worldwide, including the United States, Mexico, European Union, United Kingdom, Australia, China, and elsewhere. The registrations cover a wide range of products and services sold and advertised through Complainant’s “ website. The POTTERY BARN trademark registrations include, but are not limited to, U.S. Trademark Registration Nos. 6389622 for POTTERY BARN; 6130848 for POTTERY BARN; 2021077 for POTTERY BARN; 2709241 for POTTERY BARN BABY; 6974836 for POTTERY BARN DORM; 2383910 for POTTERY BARN KIDS; and 6718521 for POTTERY BARN TEEN (collectively “POTTERY BARN Marks”).

The disputed domain names were registered on the following dates:

<potterybarn-usa.shop> February 4, 2025
<potterybarnus.com> February 27, 2025

<potterybarn-storehouse.shop> March 24, 2025

5. Parties’ Contentions

A. Complainant

Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names.

Notably, Complainant contends that disputed domain names are confusingly similar to Complainant’s
POTTERY BARN Marks.

Regarding the disputed domain name <potterybarnus.com>, the registrant has added only the geographic accessing a specific geographic version of Complainant’s “ website.
initialism “us.” This is likely to divert users who are interested in reaching Complainant’s legitimate
” website in the United States: because “US” is a well-known initialism for the United

page 3

The disputed domain name <potterybarn-usa.shop> is nearly identical to Complainant’s POTTERY BARN for “United States of America.” Complainant is headquartered in the United States and has retail stores in the United States; consumers will believe when entering this disputed domain name into their browser that they may access a specific geographic version of Complainant’s “ website.

The disputed domain name <potterybarn-storehouse.shop> is nearly identical to Complainant’s POTTERY BARN Mark, incorporating the entirety of the POTTERY BARN Mark and adding the generic and non-source- identifying term “storehouse.” Consumers will believe when entering this disputed domain name into their browser that they are accessing the “storehouse” or “store” or “warehouse” for Complainant’s Pottery Barn brand.

Respondents have no rights or legitimate interest in the disputed domain names. Respondents are not known by “PotteryBarnUS.com,” “PotteryBarn-USA.com,” or “PotteryBarn-Storehouse.shop,” nor could Respondents have developed any common-law trademark rights in Complainant’s senior and well-known

POTTERY BARN Mark. Respondents are not affiliated with Complainant, and, more importantly,
Complainant has not licensed or permitted Respondents to use the POTTERY BARN Mark, any other of
Complainant’s Marks, or any domain names incorporating them.

Respondents have engaged in a typical act of typosquatting and nefarious redirection by using the identical letter string “potterybarn” with the added lettering “us,” “usa,” or “storehouse,” which users are likely to believe indicate Complainant’s official United States online presence for Pottery Barn or a store for Complainant’s Pottery Barn brand.

registered and are using the disputed domain names <potterybarnus.com> and <potterybarn-storehouse.shop> in a deliberate attempt to direct third parties looking for Complainant to its websites through deceit by impersonating Complainant and its well-known Pottery Barn brand. Respondents were clearly aware of Complainant and its prior trademark rights, as the reputation and renown of Complainant was instrumental to Respondents’ deceptive scheme and registered nearly identical domains to Complainant’s “ website which incorporate the entirety of Complainant’s POTTERY BARN Mark. The above-mentioned disputed domain names resolve to websites that prominently display	Respondents have registered and are using the disputed domain names in bad faith. Respondents they have reached authentic Complainant websites.
Respondents exhibit bad faith by purchasing and holding the disputed domain name <potterybarn-usa.shop>, as it was surely aware of Complainant at the time it purchased that domain name. Additionally, Complainant has reason to believe that the site at that disputed domain name previously or currently held malware or otherwise maliciously affected Internet users, given the Google Chrome warning appearing for Internet users trying to access the disputed domain name. According to Complainant, this combination of danger warning and maintaining domain names for well-known third-party marks constitutes bad faith.
B. Respondents
Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 10(e) of the Rules grants the Panel authority to “decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Similarly, paragraph 3(c) of the Rules provides that a complaint “may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder”.

page 4

Prior UDRP panel decisions have described situations which indicate multiple domain names are under the common control or ownership of a single person including a presumption that common control may exist where “the domain names at issue point to nearly identical web pages”. General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834; see also Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659 (noting that the multiple domains at issue “all directed to essentially identical websites”). Additionally, when the registrants provide false or incorrect WhoIs information there can be a presumption of common control.

In this case Complainant has averred the disputed domain names are registered by the same entity or are under common control for the following reasons:

- the websites connected to the disputed domain names <potterybarnus.com> and
<potterybarn-storehouse.shop> are virtually indistinguishable;

- <potterybarn-usa.shop> and <potterybarnus.com> have the same registrar;

- all of the disputed domain names incorporate the Pottery Barn Mark in its entirety;

- all of the disputed domain names were registered within a two-month period; and

- the contact information for each of the disputed domain domains is more likely than not false.

Given what Complainant has submitted and a lack of objection from any of Respondents, the Panel has concluded that the disputed domain names are under common control. The Respondents are, therefore, hereinafter collectively referred to as the “Respondent”.

A. Identical or Confusingly Similar

The Complainant has demonstrated it owns registered trademark rights in its POTTERY BARY Marks, and that it owns the <potterybarn.com>, <potterybarnkids.com>, and <potterybarnteens.com> domain names. The additions of “us”, “-usa” and “-storehouse” does not prevent the Complainant’s trademark from being recognizable in the disputed domain names. The generic Top-Level Domains (“gTLDs”) “.shop” and “.com”

are viewed as a standard registration requirement and as such may be disregarded under the first element
confusing similarity test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”), section 1.8, and Hoffmann-La Roche AG v. Domain Admin, Privacy

Protection Service INC d/b/a PrivacyProtect.org / Conan Corrigan, WIPO Case No. D2015-2316.

Accordingly, the disputed domain names are confusingly similar to a mark in which Complainant has rights.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case that Respondent has no rights or legitimate interests in
respect of the disputed domain names and has not been commonly known by the disputed domain names.
The fact that the Respondent obtained the disputed domain names years after Complainant started selling its
goods and services under the POTTERY BARN Marks indicates that Respondent sought to piggyback on
the POTTERY BARN Marks for illegitimate reasons.

After a complainant has made a prima facie case, the burden of production shifts to a respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

Here, Respondent has provided no evidence of any rights or legitimate interests in the disputed domain names. Moreover, the evidence provided by Complainant shows that two of the domain names resolved to websites featuring the Complainant’s trademark, logo, and copyrighted images of Complainant’s trademarked goods. While resellers and distributors may have limited rights to use a complainant’s trademark for nominative purposes, the lack of any authorization by Complainant and similarly, the lack of any information on the two active disputed domain names as to the lack of authorization or relation to Complainant created an impression of some kind of official affiliation with Complainant, renders any fair use safe haven inapplicable in this instance. See section 2.8 of the WIPO Overview 3.0.

page 5

Above all, the nature of the disputed domain names incorporating Complainant’s trademark in its entirety, carries a risk of implied affiliation, especially when considering the impersonating nature of the content exhibited at the disputed domain names, and as such cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0.

In the absence of any evidence rebutting Complainant’s prima facie case indicating Respondent’s lack of rights or legitimate interests in respect of the disputed domain names, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has established the Respondent’s bad faith registration and use of the disputed domain names. Paragraph 4(b)(iv) of the Policy states that evidence of bad faith may include a respondent’s use of a domain name to intentionally attempt to attract Internet users for commercial gain.

Due to the incorporation of the POTTERY BARN mark in the disputed domain names and two resolving to active websites seemingly impersonating Complainant by featuring Complainant’s trademark, logo, and copyrighted images of Complainant’s trademarked goods, while the other resolved to a website which potentially contained malware, it is inconceivable that Respondent registered the disputed domain names without knowledge of Complainant.

The facts establish a deliberate effort by Respondent to cause confusion with the Complainant for
commercial gain. Such an impersonation of the Complainant is sufficient to establish Respondent’s bad faith
(see section 3.1.4 of the WIPO Overview 3.0). Under these circumstances, the Panel finds no plausible
good faith reason for the Respondent’s conduct and concludes that the disputed domain names were
registered and are being used in bad faith.

Complainant has shown the disputed domain name <potterybarn-usa.shop> has been deemed unsafe and could be used to install malware or to reveal personal information such as users’ passwords or credit card data. UDRP panels have found that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware

distribution. See section 3.4 of the WIPO Overview 3.0.

The Panel finds that Complainant has satisfied paragraph 4(a)(iii) 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 names <potterybarn-storehouse.shop>, <potterybarn-usa.shop>,

<potterybarnus.com> be transferred to Complainant.

/Colin T. O'Brien/
Colin T. O'Brien
Sole Panelist
Date: May 15, 2025