Williams-Sonoma, Inc. v Shana Rodriguez, Disc Jockey
WIPO Case No. D2025-0315
•07-04-2025
| ARBITRATION AND MEDIATION CENTER |
ADMINISTRATIVE PANEL DECISION
Williams-Sonoma, Inc. v. Shana Rodriguez, Disc Jockey
Case No. D2025-0315
1. The Parties
Complainant is Williams-Sonoma, Inc., United States of America (“United States” or “U.S.”), represented by
Hanson Bridgett LLP, United States.
Respondent is Shana Rodriguez, Disc Jockey, United States.
2. The Domain Name and Registrar
The disputed domain name <westelmox.com> (the “Domain Name”) is registered with Gname.com Pte. Ltd.
(the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 27, 2025. connection with the Domain Name. On January 29, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 January 29, 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 3, 2025.
The Center verified that the Complaint together with the First 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 February 10, 2025. In accordance with the Rules, paragraph 5, the due date for Response was March 2, 2025. Respondent did not submit any response. Accordingly, the Center
notified Respondent’s default on March 3, 2025.
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The Center appointed John C. McElwaine as the sole panelist in this matter on March 24, 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 a leading retailer of home furnishings and related products operating under the WEST ELM brand since 2002. Complainant offers its WEST ELM products through over 100 retail stores, its e-commerce website at <westelm.com>, and mobile applications.
Complainant owns the following relevant trademark registrations:
| - | WEST ELM, U.S. Registration No. 2845444, registered May 25, 2004, for retail store services in |
Class 35;
| - | WEST ELM, U.S. Registration No. 2725772, registered June 10, 2003, for mail order catalog services |
in Class 35; and
| - | WEST ELM, U.S. Registration No. 2738123, registered July 15, 2003, for various goods in Class 24. |
Collectively, Complainant’s registered trademark rights are referred to herein as the “WEST ELM Mark”.
The Domain Name was registered on December 8, 2024. The Domain Name resolves to a website that purports to be operated by Complainant for application development employment.
5. Parties’ Contentions
A. Complainant
Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the
Domain Name.
With respect to the first element of the Policy, Complainant asserts ownership of multiple U.S. trademark registrations for the WEST ELM Mark dating back to 2003. Complainant asserts that by virtue of its widespread use, promotion, and recognition, the WEST ELM Mark is a well-known source identifier among the general public.
Concerning the second element of the Policy, Complainant alleges that Respondent has no rights or
legitimate interests in the Domain Name. Complainant has not licensed or authorized Respondent to use its
WEST ELM Mark. Moreover, Respondent is using the Domain Name as part of a fraudulent employment
scheme where Respondent impersonates Complainant by sending fake job offers via text message, directing
them to the website connected to the Domain Name and requesting individuals to deposit funds into
accounts controlled by Respondent.
With respect to the third element of the Policy, Complainant asserts bad faith registration and use based on Respondent's fraudulent scheme. The evidence shows Respondent registered the Domain Name in 2024, over 20 years after Complainant began using its WEST ELM Mark. Respondent uses the Domain Name to solicit sensitive personal information and money from potential job candidates. Respondent even created a fake “New York Division of Corporations” document to convince users of its legitimacy.
B. Respondent
Respondent did not reply to Complainant’s contentions.
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6. Discussion and Findings
Although Respondent defaulted, to succeed in this proceeding, paragraph 4(a) of the Policy requires
Complainant to prove its assertions with evidence demonstrating:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which
Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated elements are as follows:
within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co.
Limited v. AnonymousSpeech LLC and Global House Inc., WIPO Case No. D2009-1779; Bjorn Kassoe
Andersen v. Direction International, WIPO Case No. D2007-0605; and see also paragraph 5(f) of the Rules
(“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall
decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the
A. Identical or Confusingly Similar
| (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison | It is well accepted that the first element functions primarily as a standing requirement. The standing registration is generally sufficient evidence that a 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. On this point, Complainant has provided evidence that it is the owner of numerous trademark registrations for the WEST ELM Mark. |
| The Domain Name incorporates Complainant’s WEST ELM Mark in its entirety, with the addition of the letters “ox”. As stated in section 1.8 of the WIPO Overview 3.0, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. Therefore, the Panel concludes that the Domain Name is confusingly similar to Complainant’s WEST ELM Mark, and Complainant has satisfied the first element of the Policy. | |
| B. Rights or Legitimate Interests | |
| 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 Domain Name. Respondent has not rebutted Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating |
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rights or legitimate interests in the Domain Name such as those enumerated in the Policy[1] or otherwise.
As an initial matter, based on the record and the lack of evidence otherwise, the Panel finds that Respondent is not commonly known by the Domain Name. See Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049 (“the Panel notes that the respondent’s name is ‘Bestinfo’ and that it can therefore not be ‘commonly known by the Domain Name’.”)
Instead, the Panel finds that the purpose of registering the Domain Name was to engage in a fraudulent employment offer scheme, which is not a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the
sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account use of a domain name for the illegitimate purpose of impersonating the complainant in the furtherance of a fraudulent scheme).
access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate
interests on a respondent.”); see also, Startup Group v. Whois Agent, Domain Protection Services, Inc. /
Based on the foregoing, Complainant has made a prima facie showing of Respondent’s lack of any right or
legitimate interest and Respondent has failed to come forward with evidence to rebut that showing. The
Panel finds that Respondent does not have rights or legitimate interests in the Domain Name and that
Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
It is immediately apparent that Complainant’s WEST ELM Mark was intentionally chosen when the Domain Name was registered with the intent to impersonate Complainant for the purpose of engaging in fraudulent employment offers. Knowledge of Complainant’s business and its WEST ELM Mark is established by the use of Complainant’s trademark and logo on the webpage that resolves from the Domain Name. In light of
the testimony asserting fraudulent use of the Domain Name, there could be no other legitimate explanation
except that Respondent intentionally registered the Domain Name to cloak its actions and deceive recipients
into believing the job offers were from Complainant. Such activity constitutes a disruption of Complainant’s
business and also establishes bad faith registration and use. See Securitas AB v. Whois Privacy Protection
Service, Inc. / A. H., WIPO Case No. D2013-0117 (finding bad faith based upon the similarity of the disputed
domain name and the complainant’s mark, the fact that the complainant is a well-known global security
company and the fact that the disputed domain name is being used to perpetrate an email scam.) In
addition, it appears that the Domain Name was registered using false contact details, which is further indicia
of bad faith under the Policy. See Hermes International v. Jack Yong, WIPO Case No. D2017-1959
(“the fact of a non-existent postal address is difficult to explain”); TBWA Worldwide, Inc. v. Karim Bendali,
WIPO Case No. D2019-1932 (the postal address revealed by the Registrar was not accurate).
The use of the Domain Name to conduct fraud constitutes a disruption of Complainant’s business and also establishes bad faith registration and use pursuant to paragraph 4(b)(iii) of the Policy. See Securitas AB v. Whois Privacy Protection Service, Inc. / A. H., WIPO Case No. D2013-0117 (Finding bad faith based upon the similarity of the disputed domain name and the complainant’s mark, the fact that the complainant is a
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well-known global security company, and the fact that the disputed domain name is being used to perpetrate
an email scam.) As discussed above, Respondent used several other indicia of Complainant in addition to
the Domain Name when communicating with third parties with the fraudulent purpose of misleading such job
seekers. In light of the actions undertaken by Respondent, it is inconceivable that Respondent coincidentally
selected the Domain Name without any knowledge of Complainant. See Arkema France v. Steve Co.,
Stave Co Ltd., WIPO Case No. D2017-1632.
For the reasons set forth above, the Panel holds that Complainant has met its burden under
paragraph 4(a)(iii) of the Policy and has established that Respondent registered and is using the Domain
Name in bad faith.
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 Domain Name <westelmox.com> be transferred to Complainant.
/John C McElwaine/
John C McElwaine
Sole Panelist
Date: April 7, 2025
legitimate interests in a contested domain name: “(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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.”
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