Williams-Sonoma, Inc. v Su Ping Neo, Yue Tai Real Estate co. Ltd

WIPO Case No. D2025-0832

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Williams-Sonoma, Inc. v. Su Ping Neo, Yue Tai Real Estate co. LTD

Case No. D2025-0832

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 Su Ping Neo, Yue Tai Real Estate co. LTD, Cambodia.

2. The Domain Names and Registrar

The disputed domain names <williamssonoma-login.com>, <williams-sonomaltd.com>, and

<williamssonoma-online.com> are 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 February 27, <williams-sonomaltd.com> into the dispute. On March 12, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the added domain name. On March 13, 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 the Complainant on March 13, 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 March 14, 2025 in respect of the disputed domain names <williamssonoma-login.com> and <williams-sonomaltd.com>, and requested the addition of the domain name <williamssonoma-online.com> into the dispute. On March 17, 2025, the Center transmitted by email to the Registrar a request for registrar verification in connection with the third added domain name. On March 17, 2025, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the third added disputed domain name which is the same as the registrant of the other two disputed domain names.
2025, initially only in regard to the <williamssonoma-login.com> domain name. On February 28, 2025, the
Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed
domain name. On March 3, 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. On March 7, 2025, the

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The Center sent an email communication to the Complainant on March 18, 2025, providing the registrant and
contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the
Complaint comprising all three domain names. The Complainant filed an amended Complaint on March 19,

2025 in respect of the three disputed domain names.

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 the Respondent of the
Complaint, and the proceedings commenced on March 21, 2025. In accordance with the Rules, paragraph
5, the due date for Response was April 10, 2025. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on April 17, 2025.

The Center appointed Edoardo Fano as the sole panelist in this matter on April 28, 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.

The Panel has not received any requests from the Complainant or the Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.

Having reviewed the communication records in the case file provided by the Center, the Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a) “to employ reasonably available means calculated to achieve actual notice to [the] Respondent”. Therefore, the Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of a response from the Respondent.

The language of the proceeding is English, being the language of the Registration Agreements, as per paragraph 11(a) of the Rules.

4. Factual Background

The Complainant is Williams-Sonoma, Inc., a United States company operating as retailer and manufacturer of home goods since 1956, owning several trademark registrations for WILLIAMS SONOMA, among which:

- United States Trademark Registration No. 2,353,758 for WILLIAMS SONOMA, registered on May 30, 2000;

- United States Trademark Registration No. 2,442,099 for WILLIAMS SONOMA, registered on April 10,

2001;

- United Kingdom Trademark Registration No. UK0002616947 for WILLIAMS-SONOMA, registered on

August 10, 2012;

- European Union Trade Mark Registration No. 011728631 for WILLIAMS-SONOMA, registered on

September 12, 2013.

The Complainant also operates on the Internet, “ being its official website.

The Complainant provided evidence in support of the above.

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According to the WhoIs records, the disputed domain names were registered on the following dates: <williamssonoma-login.com> on January 20, 2025, while <williams-sonomaltd.com> and <williamssonoma- online.com> on February 19, 2025. All the three disputed domain names are inactive. However, when the Complaint was filed, the disputed domain names resolved to websites (almost identical among each other and very similar to the Complainant’s official website) on which the Complainant’s trademark and copyrighted images were reproduced, allegedly marketing and selling the same products as the Complainant.

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 names.

Notably, the Complainant states that the disputed domain names are confusingly similar to its trademark
WILLIAMS SONOMA, as they all include the Complainant’s trademark in its entirety.

The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names since it has not been authorized by the Complainant to register the disputed domain names or to use its trademark within the disputed domain names, it is not commonly known by the disputed domain

names and it is not making either a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. The disputed domain names resolved to websites (almost identical among each other and very similar to the Complainant’s official website) on which the Complainant’s
trademark and copyrighted images were reproduced, allegedly marketing and selling the same products as
the Complainant, the Respondent passing itself off as the Complainant.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith, since the Complainant’s trademark WILLIAMS SONOMA is well-known in the home goods field. Therefore, the Respondent targeted the Complainant’s trademark at the time of registration of the disputed domain names and the Complainant contends that the Respondent’s use of the disputed domain names to trade off of the Complainant’s well-known trademark and goodwill to advertise products and impersonate the Complainant’s website qualifies as bad faith registration and use.

B. Respondent

The Respondent has made no reply to the Complainant’s contentions and is in default. In reference to paragraphs 5(f) and 14 of the Rules, no exceptional circumstances explaining the default have been put forward or are apparent from the record.

A respondent is not obliged to participate in a proceeding under the Policy, but if it fails to do so, reasonable facts asserted by a complainant may be taken as true, and appropriate inferences, in accordance with paragraph 14(b) of the Rules, may be drawn. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) section 4.3.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists three elements, which the Complainant must satisfy in order to succeed:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii)      the disputed domain names have been registered and are being used in bad faith.

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

Based on the available record, the Panel finds the Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1.

The Panel finds the entirety of the mark WILLIAMS SONOMA is reproduced within the disputed domain
names. Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the
Policy. WIPO Overview 3.0, section 1.7.

While the addition of other terms, here “login”, “ltd”, and “online”, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

It is also well accepted that a generic Top-Level Domain (“gTLD”), in this case “.com”, is typically ignored
when assessing the similarity between a trademark and a domain name. WIPO Overview 3.0, section

1.11.1.

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.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have
recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the
often-impossible 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
names. 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 present record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The disputed domain names resolved to websites (almost identical among each other and very similar to the Complainant’s official website) on which the Complainant’s trademark and copyrighted images were reproduced, purportedly marketing and selling the same products as the Complainant.

Panels have held that the use of a domain name for illegal activity, here impersonation/passing off or fraudulent activities, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

Despite the above, should the Complainant’s products sold on the websites to which the disputed domain names are directing Internet users be genuine products, legitimately acquired by the Respondent, the question that would arise is whether the Respondent would therefore have any rights or legitimate interests in using the above disputed domain names that are confusingly similar to the Complainant’s trademark in circumstances that are likely to give rise to confusion.

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According to the current state of UDRP decisions in relation to the issue of resellers as summarized in the

WIPO Overview 3.0, section 2.8.1:

“[...] resellers, distributors, or service providers using a domain name containing the complainant’s trademark
to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide
offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki

Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case:

(i) the respondent must actually be offering the goods or services at issue;
(ii) the respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder;
and

(iv) the respondent must not try to ‘corner the market’ in domain names that reflect the trademark.”

This summary is based on the UDRP decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.
D2001-0903.

Even if the products sold by the Respondent were the Complainant’s genuine products, from inspection of the Respondent’s websites, the Panel finds that the use of the Complainant’s trademark and copyrighted images, and the lack of any prominent and accurate disclaimer disclosing the lack of relationship with the Complainant would falsely suggest to Internet users, under the Oki Data principles (see above), that the websites to which the disputed domain names resolve are owned by the Complainant or at least somehow affiliated to the Complainant.

The Panel therefore concludes that the disputed domain names are not being used in connection with a bona fide offering of goods or services.

Moreover, the Panel finds that the composition of the disputed domain names carries a risk of implied affiliation as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. WIPO Overview 3.0, section 2.5.1.

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 circumstances, in particular but without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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 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.

In the present case, regarding the registration in bad faith of the disputed domain names, the reputation of the Complainant’s trademark WILLIAMS SONOMA in the home goods field is clearly established, and the Panel finds that the Respondent knew of the Complainant and deliberately registered the confusingly similar

disputed domain names, especially because the disputed domain names resolve to websites (almost selling WILLIAMS SONOMA branded home products.

identical among each other and very similar to the Complainant’s official website) on which the

The Panel further notes that the disputed domain names were also used in bad faith, since the Respondent was trying to impersonate the Complainant, likely in connection to a fraudulent scheme, with the purpose of intentionally attempting to create a likelihood of confusion with the Complainant’s trademark as to the

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disputed domain names’ source, sponsorship, affiliation or endorsement, an activity clearly detrimental to the
Complainant’s business. WIPO Overview 3.0, sections 3.1.4 and 3.4.

As regards the current use of the disputed domain names, being inactive, panels have found that the non- use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. WIPO Overview 3.0, section 3.3. Having reviewed the record, the Panel notes the reputation of the Complainant’s trademark in the field of home goods, the nature of the disputed domain names (which are almost identical to the Complainant’s trademark WILLIAMS SONOMA), the previous use of the disputed domain names, and the failure of the Respondent to submit a response, and finds that in the circumstances of this case, the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

Moreover, the Panel considers that the nature of the inherently misleading disputed domain names, which
include the Complainant’s trademark in its entirety with the mere addition of the terms “login”, “ltd”, and
“online”, further supports a finding of bad faith. WIPO Overview 3.0, section 3.2.1.

Having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed domain names constitutes bad faith under the Policy.

The Panel 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 names <williamssonoma-login.com>, <williams-sonomaltd.com>, and

<williamssonoma-online.com> be transferred to the Complainant.

/Edoardo Fano/
Edoardo Fano
Sole Panelist
Date: May 12, 2025