Williams-Sonoma, Inc. v My Maane

WIPO Case No. D2025-0712

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. My Maane

Case No. D2025-0712

1. The Parties

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

Bridgett LLP, United States.

Respondent is My Maane, United States.

2. The Domain Name and Registrar

The Disputed Domain Name <williams-sonoma-usa.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 February 20, 2025. On February 21, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 21, 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) and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2025, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 26, 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 Respondent of the Complaint, and the proceedings commenced on March 3, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 23, 2025. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 31, 2025.

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The Center appointed Richard W. Page as the sole panelist in this matter on April 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

Complainant is one of America’s premiere home goods retailers and manufacturers whose well-known brands include Williams Sonoma, Pottery Barn, West Elm, and Rejuvenation, among others, selling internationally through its retail stores, catalogs, and online. Complainant launched its Williams Sonoma brand in 1956, and has since continuously offered a full line of in-house designed, exclusive products for the home, from kitchenware to furniture using the distinctive and well-known trademarks WILLIAMS SONOMA, WILLIAMS SONOMA HOME, WILLIAMS SONOMA SIGNATURE, WILLIAMS SONOMA CALIFORNIA, and WILLIAMS SONOMA RESERVE (collectively the “WILLIAMS SONOMA Mark”) through catalogs, online storefronts such as < and over 150 retail store locations worldwide.

Complainant owns hundreds of trademark registrations in the United States and around the world for marks comprised of or incorporating the WILLIAMS SONOMA Mark. Certain of these registrations are:

United States Registration No. 2,442,099 for WILLIAMS SONOMA registered April 10, 2001 in primary international class 021;

United States Registration No. 2,353,758 for WILLIAMS SONOMA registered May 30, 2000 in primary international class 035; and

United Kingdom registration No. UK 00002616947 for WILLIAMS-SONOMA registered August 10, 2012 in international classes 8, 21, 35.

The WILLIAMS SONOMA Mark has been continuously used in United States commerce and has achieved significant consumer recognition around the world.

Complainant’s “ website serves as the primary official internet presence of and
access point for consumers viewing and purchasing goods in connection with the WILLIAMS SONOMA

Mark, and learning about Complainant and its William Sonoma brand.

The Disputed Domain Name was registered February 15, 2025, and resolved to a website which contains
the WILLIAMS SONOMA Mark as a header and other copyrighted material. After a takedown request by the

Complainant, the Disputed Domain Name resolves to an inactive page.

5. Parties’ Contentions

A. Complainant

Complainant contends that it has used its “ website as its primary access for customers since at least as early as 1997. Complainant further contends that, by virtue of Complainant’s widespread use, promotion, and recognition, the WILLIAMS SONOMA Mark is a well-known source identifier

among the general public of Complainant and its Willimas Sonoma brand, goods, and services and the

WILLIAMS SONOMA Mark is an asset of incalculable value to Complainant.

Complainant further contends that, in light to the above and the fact that the Disputed Domain Name was
first registered in 2025 (over half a century after Complainant first began using its WILLIAMS SONOMA Mark
and over two decades after Complainant first offered good and services through its “
sonoma.com” website), Respondent registered the Disputed Domain Name with prior actual knowledge and
constructive notice of Complainant’s rights in and to the WILLIAMS SONOMA Mark in an attempt to scam
Internet users into believing that Respondent is somehow affiliated with Complainant and a source for

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Complainant’s genuine goods under the Williams Sonoma brand by impersonating Complainant’s

“ website.

Complainant further contends that Respondent is not affiliated with Complainant or any affiliate of
Complainant’s authorized to sell its goods and services, nor is Respondent authorized or licensed to use the

WILLIAMS SONOMA Mark or any domain name incorporating or confusingly similar to the same.

Complainant further contends that the Disputed Domain Name is confusingly similar to, and indeed is nearly
identical to, the WILLIAMS SONOMA Mark. The Disputed Domain Name incorporates the entirety of the
WILLIAMS SONOMA Mark; merely adding the non source-identifying and descriptive term “-usa” at the end
of the mark which could easily be interpreted as a reference to Complainant’s geographic headquarters.
Because it is largely identical, it is highly likely that consumers will believe when accessing the Disputed

Domain Name that they are accessing Complainant’s “ website.

Complainant further contends that the addition of the generic Top-Level Domain “.shop” is immaterial.
Further, the website to which the Disputed Domain Name resolves has attempted to mirror Complainant’s
<williams-sonoma.com> website, which indicates that this misrepresentation is intentional.

Complainant submits that, even after unmasking the information about Respondent with the Registrar, nothing in this record indicates that Respondent is commonly known by the Disputed Domain Name and has not developed any common-law trademark rights.

Complainant further submits that Respondent neither uses the Disputed Domain Name in connection with a bona fide offering of goods and services, nor in a non-commercial manner, nor in a manner that might be deemed a legitimate fair use. Complainant further submits that Respondent has used the Disputed Domain Name to deliberately imitate Complainant, by hosting a website that passes itself off as Complainant’s. After Complainant’s letter to the host of Respondent’s website, the infringing website was taken down. The website to which the Disputed Domain Name resolved was replete with Complainant’s copyrighted images and listings for Complainant’s products in Complainant has valuable trade dress and/or design patent rights.

Complainant alleges that the header on the website to which the Disputed Domain Name resolves is the WILLIAMS SONOMA Mark, tending to mislead consumers into believing they have reached Complainant’s authentic website. Complainant further alleges that this is an intentional act by Respondent to use confusion to get Internet users to redirect to Respondent’s website.

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

Disputed Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable.”

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will
review the evidence proffered by Complainant to verify that the three essential elements of the claims are
met. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 4.3.

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Paragraph 4(a) of the Policy directs that Complainant must prove each of the following three essential elements:

i)         that the Disputed Domain Name registered by Respondent is identical or confusingly similar to the WILLIAMS SONOMA Mark in which Complainant has rights; and,

ii)        that 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.

A. Identical or Confusingly Similar

WIPO Overview 3.0, section 1.2.1 states that registration is prima facie evidence of Complainant having enforceable rights in the WILLIAMS SONOMA Mark.

Complainant has shown rights in respect of the WILLIAMS SONOMA Mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

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 WILLIAMS SONOMA Mark and the Disputed Domain Name. WIPO Overview 3.0, section 1.7.

The entirety of the WILLIAMS SONOMA Mark is reproduced within the Disputed Domain Name. purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of other terms, here “-usa”, 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 WILLIAMS SONOMA 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 allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Disputed Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations 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; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the

Disputed Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Disputed Domain Name,
without intent for commercial gain to misleadingly divert consumers or to tarnish the WILLIAMS SONOMA
Mark at issue.

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

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Having reviewed the available record, the Panel finds Complainant has established a prima facie case that 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.

Panels have held that the use of a domain name for illegitimate activity, here claimed as impersonation and
passing off, can never confer rights or legitimate interests on Respondent. WIPO Overview 3.0, section

2.13.1.

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

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of the Disputed Domain Name:

(i) circumstances indicating that you [Respondent] have registered or you have acquired the Disputed the Disputed Domain Name; or
Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain

Name registration to Complainant who is the owner of the WILLIAMS SONOMA Mark or to a competitor of

(ii) you [Respondent] have registered the Disputed Domain Name in order to prevent the owner of the have engaged in a pattern of such conduct; or

(iii) you [Respondent] have registered the Disputed Domain Name primarily for the purpose of disrupting the

business of a competitor; or

(iv) by using the Disputed Domain Name, you [Respondent] have intentionally attempted to attract, for
commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion
with the WILLIAMS SONOMA Mark as to the source, sponsorship, affiliation, or endorsement of your website
or location or of a product on your website or location.

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 the Disputed Domain Name in bad faith.

In the present case, the Panel notes that the Respondent’s actions have satisfied the elements of paragraph

4(b)(iv) of the Policy.

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a
Disputed Domain Name was registered and used in bad faith, but other circumstances may be relevant in
assessing whether Respondent’s registration and use of the Disputed Domain Name is in bad faith.

WIPO Overview 3.0, section 3.2.1.

The Panel also finds that Respondent knew or should have known of Complainant’s rights in the WILLIAMS
SONOMA Mark when it registered the Disputed Domain Name. WIPO Overview 3.0, section 3.2.2.

Panels have held that the use of the Disputed Domain Name for illegitimate activity, here impersonation and passing off, constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel finds Respondent’s registration and use of the Disputed Domain Name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

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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 <williams-sonoma-usa.shop> be transferred to the Complainant.

/Richard W. Page/
Richard W. Page
Sole Panelist
Date: April 22, 2025