Williams-Sonoma, Inc. v NameSilo, LLC, Domain Administrator

WIPO Case No. D2025-0345

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. NameSilo, LLC, Domain Administrator

Case No. D2025-0345

1. The Parties

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

Bridgett LLP, United States.

Respondent is NameSilo, LLC, Domain Administrator, United States.

2. The Domain Name and Registrar

The disputed domain name <williamssonoma.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. connection with the disputed domain name. On January 29, 2025, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center sent an email communication to Complainant on January 31, 2025, providing the registrant and contact information disclosed by the Registrar, confirming that Respondent as listed in the Complaint is the confirmed registrant. Complainant filed an amended Complaint on February 5, 2025.

The Center verified that the 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 4, 2025. In accordance with the Rules, paragraph
5, the due date for Response was February 24, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on February 25, 2025.

The Center appointed Scott R. Austin as the sole panelist in this matter on March 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.

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The Panel notes that the Complainant submitted its amended Complaint (merely updating registrant information provided by the Center) the day after the proceeding commenced, that the amended Complaint was copied to the Respondent at that time, and that to date the Respondent has not participated in the present proceeding.

4. Factual Background

Without contest by Respondent, Complainant asserts in its Complaint as amended, and its Annexes attached provide a record sufficient to support that:

Launched in 1956, Complainant is a well-known home-goods retailer that sells its goods under a family of brands internationally through its retail stores, catalogs and online, including “a full line of in-house designed, exclusive products for the home, from kitchenware to furniture” under the trademark WILLIAMS SONOMA (the “WILLIAMS SONOMA Mark”). Complainant’s WILLIAMS SONOMA branded products are sold and advertised on its official website accessed at “ (the “Official WILLIAMS SONOMA Mark Website”) through its official domain names <williams-sonoma.com> which Complainant registered on October 3, 1995, and <williamssonoma.com> as well as through catalogs and at over 150 retail store locations worldwide.

Complainant shows in electronic copies of registrations from official trademark databases which the panel has also independently reviewed1 to confirm that Complainant owns hundreds of trademark registrations in the United States and around the world for marks comprised of or incorporating the WILLIAMS SONOMA Mark, including the following:

1. United States Reg. No. 2,353,758, WILLIAMS SONOMA, registered on May 30, 2000, for “retail store

services, mail order catalog services, and online retail store services featuring culinary equipment,
housewares, kitchenware and cookware” in International Class 35, claiming a first use date of September
16, 1956;

2. United States Reg. No. 2,442,099, WILLIAMS SONOMA, registered on April 10, 2001, for a range of dinnerware and kitchenware products in International Class 21, claiming a first use date of 1963; and

3. United Kingdom Reg. No. UK00002616947, WILLIAMS SONOMA, registered on August 10, 2012, for a range of goods and services in International Classes 8, 21 and 35.

Respondent registered the disputed domain name on January 22, 2025, and Complainant shows that the disputed domain name as of the date visited by Complainant on January 27, 2025, resolved to what is generally referred to as a “copycat” website which displayed pages strikingly similar if not identical to the content on the Official WILLIAMS SONOMA Mark Website, including Complainant’s trademarks as well as picture perfect copies of Complainant’s copyright protected digital images, its graphics, layout, history and identifies itself as Complainant on the “About Us” page on the website associated with the disputed domain name, and includes Complainant’s business name and address on its “Contact Us” page.

1 “Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been

accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision. This may include visiting the website linked to the disputed domain name in order to obtain more information about the respondent or its use of the domain name or accessing trademark registration databases.” WIPO

Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.8. See e.g., Humble Bundle, Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0914; Creative NetVentures, Inc. v. Webheads, WIPO Case No. D2000-1655.

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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 name also was registered and is being used in bad faith.
disputed domain name. Notably, Complainant contends that the disputed domain name is confusingly
similar to Complainant’s trademark because its registered WILLIAMS SONOMA Mark is incorporated in its
entirety in the disputed domain name; that Respondent has no rights or legitimate interests in respect of the

disputed domain name because the disputed domain name links to a copycat website impersonating

B. Respondent

Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

The onus is on Complainant to make out its case and it is apparent from the terms of the Policy that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.

Thus, for Complainant to succeed it must prove within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:

1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

2.        Respondent has no rights or legitimate interests in respect of the disputed domain name; and

3.        the disputed domain name has been registered and is being used in bad faith.

The Panel finds that Complainant has met its burden in all three elements of the Policy and will deal with each of these elements in more detail below.

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

Complainant’s trademark and the disputed domain name. WIPO Overview 3.0, section 1.7.

Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. national trademark registration documents in the name of Complainant referenced in Section 4 above. Ownership of a nationally registered trademark constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1;

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see Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No.
D2014-0657; see also Janus International Holding Co. v. Rademacher, WIPO Case No. D2002-0201.

A side-by-side comparison between the disputed domain name and Complainant’s Mark shows the disputed domain name is essentially identical to the WILLIAMS SONOMA Mark. Complainant’s WILLIAMS SONOMA Mark is incorporated in its entirety and remains recognizable in the disputed domain name, followed only by the Top-Level Domain (“TLD”) “.shop”. Prior UDRP panels have found the TLD (e.g. “com”, “.net”, “.co”),

being viewed as a standard registration requirement, may typically be disregarded under paragraph 4(a)(i) of
the Policy. See, WIPO Overview 3.0, section 1.11; see also L’Oréal v. Tina Smith, WIPO Case No.
D2013-0820.

Prior UDRP panels have held “in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” See, L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627.

The Panel finds Complainant’s WILLIAMS SONOMA Mark is recognizable and wholly incorporated in the
disputed domain name. Accordingly, the disputed domain name is identical to the mark for purposes of the

Policy. WIPO Overview 3.0, section 1.7.

Based on the available record, 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 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.

Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant contends that none of the circumstances provided in paragraph 4(c) of the Policy for demonstrating a respondent’s rights to and legitimate interests in a domain name are present in this case. Respondent has not rebutted 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.

First, Complainant contends that Respondent has no rights in the disputed domain name. Complainant asserts that it has no commercial relationship with Respondent, Respondent is not sponsored by or affiliated with Complainant in any way, and Complainant has not given Respondent authority or license to register or use Complainant’s trademarks in any manner, including in domain names. Prior UDRP panels have held “in the absence of any license or permission from Complainant to use its trademark, no actual or contemplated bona fide or legitimate use of the disputed domain name could reasonably be claimed”. Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875.

Second, there is no evidence to suggest that Respondent is commonly known by the disputed domain name, which evinces a lack of rights or legitimate interests under Policy paragraph 4(c)(ii). Respondent, as

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registrant of the disputed domain name, identified as “NameSilo, LLC, Domain Administrator” apparently retaining the name of the Registrar or its proxy service, is not commonly known by the disputed domain name because it clearly bears no resemblance to it. Prior UDRP panels have held where no evidence, including the WhoIs record for the disputed domain name, suggests that Respondent is commonly known by

the disputed domain name, then Respondent cannot be regarded as having acquired rights to or legitimate
interests in the disputed domain name within the meaning of Policy paragraph 4(c)(ii). See Moncler S.p.A. v.
Bestinfo, WIPO Case No. D2004-1049.

Most importantly, Complainant contends Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services because, as Complainant’s attached screen shots of the web pages accessed through the disputed domain name show, the disputed domain name resolves to a carefully

crafted “copycat” version of Complainant’s Official WILLIAMS SONOMA Mark Website to impersonate and
pass itself off as Complainant.

The Panel notes that evidence submitted persuasively supports Complainant’s argument because it shows Respondent’s website prominently features the unauthorized use of picture-perfect copies of Complainant’s copyright protected digital images, its graphics, layout, history, identifies itself as Complainant on the “About Us” page on the website associated with the disputed domain name, and includes Complainant’s business

name and address on its “Contact Us” page. Respondent’s activities therefore undermine any claim of rights or legitimate interests. Respondent, therefore, is using the disputed domain name to confuse Internet users and suggest an affiliation with or sponsorship by Complainant to redirect Internet users to its website for its
commercial gain. Based on these facts the Panel finds Respondent’s actions are clearly not legitimate and
clearly are misleading. Respondent, therefore, cannot establish rights or legitimate interests pursuant to
paragraph 4(c)(iii) of the Policy. See Six Continents Hotels v. “m on”, WIPO Case No. D2012-2525; see

also Frankie Shop LLC v. Jie Wen, WIPO Case No. D2022-4197.

It is a well-established principle according to a consensus of UDRP Panels that the use of a domain name for
illegitimate activity, such as the impersonation or selling possibly counterfeit goods, can never confer rights
or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1. See also Frankie Shop LLC v.

Domain Protection Services Inc. / My Mo, WIPO Case No. D2022-0825.

Having reviewed the 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.

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 sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may also be relevant in assessing whether a respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

Complainant contends that Respondent has demonstrated a knowledge of and familiarity with Complainant’s domain name for registration that is confusingly similar to Complainant’s trademark, as well as its official domain names <williamssonoma.com> and <williams-sonoma.com>. Prior UDRP panels have found a domain name was registered in bad faith where the respondent registered the domain name for the purpose of intentionally attempting to impersonate or mislead in order to commit fraud. See, e.g., Houghton Mifflin Co. v. The Weatherman Inc., WIPO Case No. D2001-0211; Frankie Shop LLC v. Bgeew Aferg, WIPO Case No. D2022-3619; Beam Suntory Inc. v. Name Redacted, WIPO Case No. D2018-2861.

well-known brand and business by registering a domain name that incorporates the WILLIAMS SONOMA

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Prior UDRP panels have also held where the disputed domain name is configured in a manner to wholly incorporate a complainant’s mark, as Complainant’s WILLIAMS SONOMA Mark is incorporated here, the disputed domain name can only sensibly refer to Complainant; thus, there is no obvious possible justification

for Respondent’s selection of the disputed domain name other than registration in bad faith. See Frankie
Shop LLC v. Bgeew Aferg, supra.

WIPO Overview 3.0, section 3.4 and The Coca-Cola Company v. PrivacyProtect.org/ N/A, Stephan Chukwumaobim, WIPO Case No. D2012-1088; Ropes & Gray LLP v. Domain Administrator, c/o DomainsByProxy.com / Account Receivable, WIPO Case No. D2020-0294.

As discussed in greater detail in Section 6B above, Complainant shows in evidence in the Annexes to its website to attract Internet users seeking Complainant’s products which constitute evidence of bad faith use under the well-established principles in the cases decided under the Policy. See
Complaint that Respondent used the disputed domain name to configure a copycat website to impersonate
Complainant by hosting a website that passes itself off as Complainant. The products ostensibly listed on
the website at the disputed domain name correspond to Complainant’s exclusive products listed on
Complainant’s Official Williams Sonoma Mark Website, and the disputed domain name is replete with
Complainant’s copyrighted images and trademarks, as well as pages featuring products in which

Having reviewed the record, the Panel finds Respondent’s registration and use of the disputed domain name constitutes bad faith registration and use under the Policy. The Panel finds that the evidence presented here: 1) Respondent’s copycat website using Complainant’s trademark, as well as content displaying infringing copies of Complainant’s copyright protected digital images of its products and related proprietary content; and 2) the composition of the disputed domain name being identical to Complainant’s WILLIAMS SONOMA Mark, as well as the official domain name <williamssonoma.com> used for the Complainant’s Official WILLIAMS SONOMA Mark Website, is sufficient for this Panel to find bad faith registration and use. Under these circumstances, there can be little doubt Respondent had actual knowledge of Complainant, targeted Complainant’s mark, and used its actual knowledge to configure a mimic website for its commercial advantage. Accordingly, 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 <williamssonoma.shop> be transferred to the Complainant.

/Scott R. Austin/
Scott R. Austin
Sole Panelist
Date: March 3, 2025