WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wayfair LLC v. Domain Admin, Whois Privacy Corp.

Case No. D2018-0673

1. The Parties

The Complainant is Wayfair LLC of Boston, Massachusetts, United States of America ("United States"), represented internally.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas.

2. The Domain Name and Registrar

The Disputed Domain Name <wayfaiar.com> is registered with TLD Registrar Solutions Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 26, 2018. On March 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On March 28, 2018, 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 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 April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 26, 2018.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 14, 2018. 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

The Complainant, Wayfair LLC, is an American e-commerce company selling home furniture and decor items from more than 10,000 suppliers with offices and warehouses located in different countries, including the United States, Canada, Germany, and the United Kingdom.

The Complainant is the holder of trademarks consisting of WAYFAIR, registered in various countries and used in connection to its e-commerce business. The Complainant's trademark portfolio includes, inter alia, the following trade and service mark registrations:

- WAYFAIR, word mark registered with the United States Patent and Trademark Office (USPTO) under No. 4143919 on May 15, 2012 in class 35.

- WAYFAIR, word mark registered with the European Intellectual Property Office (EUIPO) under No. 1071993 on February 28, 2011 in class 35.

According to the information provided by the Registrar, the registrant of the Disputed Domain Name <wayfaiar.com> is Domain Admin, Whois Privacy Corp. The Disputed Domain Name was registered on March 10, 2013 using a proxy service. The Disputed Domain Name currently resolves to a parking page displaying sponsored pay-per-click links connected to furniture which redirect to websites of the Complainant's direct competitors.

On November 17, 2016, before initiating administrative proceedings, the Complainant sent an email to the Respondent's email address noting the Respondent of the potential infringement and demanding the transfer of the Disputed Domain Name for a one-time payment of 500 USD. In an email of December 14, 2016, the Complainant reiterated this request and stated that a failure to respond by the end of the week would result in formal arbitration action to recover the Disputed Domain Name. The Complainant reiterated its demand again on January 24, 2018 with a final deadline to respond by February 1. The Complainant eventually sent a last reminder on February 2, 2018.

Having received no response to its multiple notices, the Complainant contacted the Registrar with an e-mail dated February 21, 2018 to request the disclosure of the Respondent's name and contact details. The Registrar denied this request by stating that customer details would only be disclosed upon receipt of a court order from the Bahamas. The Registrar confirmed that it had forwarded a copy of the Complainant's e-mail to the Respondent.

5. Parties' Contentions

A. Complainant

The Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. The Complainant further claims that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to the Complainant, the Respondent has not used the Disputed Domain Name in connection with a legitimate use and has engaged in a clear case of typo-squatting by confusing and profiting from consumers mistyping the Complainant's actual website address. Finally, the Complainant claims that the Disputed Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent registered and used the Disputed Domain Name to attract for commercial gain, Internet users to the Respondent's website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.

B. Respondent

The 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 the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the 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 the Disputed Domain Name. As the UDRP proceedings are expedited and do not have any evidentiary discovery, the standard of proof is the balance of probabilities.

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

i) The Disputed Domain Name is 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 Name; and

iii) The Disputed Domain Name has been registered and is being used in bad faith.

The Panel will therefore deal with each of these requirements.

A. Identical or Confusingly Similar

To prove this element, the Complainant must first establish that there is a trademark or service mark in which it has rights. The Complainant has clearly established that there are trademarks in which the Complainant has rights. The Complainant's WAYFAIR mark has been registered and used in connection to its global e-commerce business.

The Disputed Domain Name incorporates the Complainant's WAYFAIR mark in its entirety with the mere addition of the letter "a" between the "i" and the "r". The addition of a mere letter does not significantly affect the appearance or pronunciation of the Disputed Domain Name. The added letter "a" repeats the letter that one must type immediately before typing the letter "i", thereby increasing the risk of a typographical error as a result of one's imprecise handling of the "a" key. This practice is commonly referred to as typo-squatting and creates virtually identical and/or confusingly similar marks to the Complainant's trademark (Mapfre S.A. y Fundación Mapfre v. Josep Sitjar; WIPO Case No. D2011-0692; Compagnie Gervais Danone v. Jose Gregorio Hernandez Quintero, WIPO Case No. D2009-1050).

Accordingly, the Complainant has made out the first of the three elements that it must establish.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

It is well established that it is sufficient for the Complainant to make a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name in order to place the burden of production on the Respondent (see Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

The Panel notes that the Respondent has not been commonly known by the Disputed Domain Name and that the Respondent does not seem to have acquired trademark or service mark rights. The Respondent's use and registration of the Disputed Domain Name was not authorized by the Complainant. There are no indications that a connection between the Complainant and the Respondent existed.

Moreover, the Panel is of the opinion that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. It appears that the Respondent has been using the Disputed Domain Name to refer to a parking page with sponsored links that promote products and services of third parties which are either competing with or closely related to the products and services offered by the Complainant. According to the Panel, this cannot be considered as fair use of the Disputed Domain Name.

The Respondent had the opportunity to demonstrate its rights or legitimate interests but did not do so. In the absence of a Response from the Respondent, the prima facie case established by the Complainant has not been rebutted.

Therefore, the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In light of the above, the Complainant succeeds on the second element of the Policy.

C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered in bad faith and that it is being used in bad faith (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith registration and use is the use of a domain name to intentionally attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

In the present case, it is inconceivable that the Respondent was unaware of the Complainant and its trademark rights when it registered the Disputed Domain Name. The Disputed Domain Name includes the Complainant's trademark in its entirety with the addition of a single letter. This indicates that the Disputed Domain Name was registered for the purpose of typo-squatting. Moreover, the Disputed Domain Name is used to resolve to a website containing sponsored links that redirect to websites held by Complainant's direct competitors. As a result, the Respondent must have had knowledge of the Complainant's rights at the time of registering the Disputed Domain Name. The Panel therefore finds that the Respondent's awareness of the Complainant's trademark rights at the time of registration suggests bad faith.

In the present case, the Respondent is using the Disputed Domain Name to refer to a parking page incorporating sponsored links to promote products and services of third parties which are either competing with or closely related to the products and services offered by the Complainant. While the intention to earn click‑through-revenue is not in itself illegitimate, the Panel finds that the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use (see Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258; L'Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623). The Panel finds that by using the Disputed Domain Name incorporating the Complainant's trademark in connection with a website containing links to products and services relating to Complainant's industry, the Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's trademark.

Furthermore, the Panel holds that the mere addition of the letter "a" between "i" and the "r" in the term Wayfair is a form of typo-squatting which is further evidence of bad faith (ESPN, Inc. v. XC2, WIPO Case No. D2005-0444; WestJet Airlines Ltd. v. Taranga Services Pty Ltd, WIPO Case No. D2010-1814; and Compagnie Générale des Etablissements Michelin v. Terramonte Corp, Domain Manager, WIPO Case No. D2011-1951).

Additionally, by using a proxy registration service, the Respondent has taken active steps to conceal its identity (see Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696, where it was held that the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive and irresponsible conduct).

Therefore, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. In light of the above, the Complainant also succeeds on the third and last 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 <wayfaiar.com> be transferred to the Complainant.

Flip Jan Claude Petillion
Sole Panelist
Date: May 28, 2018