WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Wayfair LLC v. Mingfeng Wu, Meta-Alpha Asset Management

Case No. D2018-2033

1. The Parties

Complainant is Wayfair LLC of Boston, Massachusetts, United States of America (the “United States”), internally represented.

Respondent is Mingfeng Wu, Meta-Alpha Asset Management of Milpitas, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <wayfair.app> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2018. On September 5, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In reply to a request for clarification from the Center, Complainant filed an amended Complaint on September 10, 2018. Complainant filed a second amended Complaint on September 10, 2018.

The Center verified that the Complaint together with the amended Complaint and the second 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 September 12, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 2, 2018. An informal email communication from Respondent was received by the Center on September 5, 2018. No further Response was submitted. The Center notified the Parties that it would proceed to panel appointment on October 3, 2018.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on October 12, 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

Complainant is a United States-based ecommerce business, offering a range of home furniture-related goods under the WAYFAIR trademark. Complaint registered its WAYFAIR mark with the United States Patent & Trademark Office on May 15, 2012 (Registration No. 4143919). Complainant also owns various domain names incorporating the WAYFAIR mark, including <wayfair.com>, which resolves to Complainant’s ecommerce website “www.wayfair.com”.

Respondent is a United States-based individual who registered the disputed domain name <wayfair.app> on May 7, 2018.

The disputed domain name resolves to a parked page with “pay-per-click” links related to Complainant’s area of business, e.g., “Wayfair Home Furniture”, “Wayfair Furniture”, and “Bedroom Furniture Wood”.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain name’s similarity to Complainant’s website “www.wayfair.com” is likely to cause customer confusion, as is the content of the website to which the disputed domain name directs the customer. According to Complainant, Respondent uses the disputed domain name to confuse Complainant’s customers into visiting Respondent’s website. Complainant also contends that the website to which the disputed domain name resolves is not maintained by Respondent and is not for a company created by Respondent and that this shows that Respondent registered the disputed domain name for the purpose of selling it to Complainant or to Complainant’s competitor for a profit.

B. Respondent

After receiving notice of the filing of the instant Complaint, but before this proceeding formally commenced, Respondent sent an email to the Center stating:

I am the owner of wayfair.app. I registered wayfair.app but have not used it yet. It is good to communicate with the trademark owner to clarify the potential usage of my domain.

I notice that Wayfair LLC holds several “wayfair” trademarks, which prevent my domain name from the usage of furniture related online business (detailed in the following [excerpts from text of Complainant’s US Trademark Registration]). Those trademarks are valid in U.S. and possibly in some other countries. I have requested Wayfair LLC to provide a list of countries where they hold active trademarks earlier, but I have not received any response from Wayfair LLC yet. Most importantly, [my] domain wayfair.app is legal to be used in many other business as long as there is no conflict with the active wayfair trademarks.

Respondent did not submit a formal response to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy because the disputed domain name incorporates Complainant’s registered trademark in its entirety.

B. Rights or Legitimate Interests

Complainant has presented a prima facie case for Respondent’s lack of rights or legitimate interests in the disputed domain name, which Respondent has failed to rebut. Even though Respondent admitted in his email that “Wayfair LLC holds several “wayfair” trademarks, which prevent my domain name from the usage of furniture related online business,” he nonetheless includes in his parked page links to furniture related sites including competitors of Complainant. This is not a bona fide use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.3.

Complainant has satisfied paragraph 4(a)((iii) of the Policy section 4(a)(ii).

C. Registered and Used in Bad Faith

The Panel finds that Respondent registered and uses the disputed domain name in bad faith. The Panel finds that Respondent was probably aware of Respondent and its rights when it registered the disputed domain name. The term “wayfair” is a coined word not defined in any dictionary. Wayfair LLC v. Yang Hong Juan, WIPO Case No. D2018-0666. Consequently, it is incumbent on Respondent to offer a benign explanation for registering the disputed domain name, but Respondent offers no explanation. On the contrary, his email acknowledges Complainant’s trademark registrations, and their validity. Although Respondent does not say when he learned of Complainant’s rights, the Panel exercises its discretion to make the negative inference from Respondent’s silence on this point that Respondent was aware of and targeted Complainant when it registered the disputed domain name. Given the absence of a dictionary meaning for “wayfair,” the Panel can conceive of no other plausible explanation and Respondent offers none.

Respondent is also using the disputed domain name in bad faith, as explained above in the finding that Respondent is not making a bona fide use of the disputed domain name. Based on Respondent’s linking to furniture related sites, the Panel finds that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”. Policy 4(b)(iv).

The decision here in Complainant’s favor is based only on the evidence and inferences above. Although they are sufficient to satisfy Complainant’s burden, Complainant could have, and should have, introduced additional evidence into the record. If Complainant had introduced evidence of its use of its mark in commerce, and evidence that it was well known to consumers, this case would have been straightforward and not one based on inferences. Such evidence was readily available, but Complainant chose to rely only on its federal registration.

Complainant could have offered specific evidence that its trademark is well-known or famous, which facts could have supported a finding that Respondent probably knew of Complainant’s rights (see e.g., the types of evidence often used to support such a claim as set out in WIPO Overview 3.0, Section 1.3). Instead, Complainant relies entirely on its U.S. federal trademark registration. In most cases, this is inadequate because Complainant must prove that Respondent acted in “bad faith”, which generally requires more than mere constructive knowledge of the registration. It requires some evidence that Respondent was probably aware of Complainant’s rights. Although some cases have relied in part on notions on constructive knowledge, this is generally combined with evidence of “complainant’s reputation and the strength or distinctiveness of its mark, or facts that corroborate an awareness of the complainant’s mark”. WIPO Overview 3.0 , Section 3.2.2.

Rather than offer readily-available evidence of its use of its mark in commerce, Complainant argues (but even this is without supporting evidence) that “[b]ecause the website does not direct to a website for a company created by the Respondent, it is evident” that the disputed domain name was registered in bad faith. This paints with too broad a brush and the Panel is not willing to go so far where this is the only evidence in the record and Complainant could have easily collected and submitted additional evidence.

Complainant did not observe or argue that “wayfair” was a coined term not defined in English dictionaries. But for this key Panel finding, there would have been no basis in this record to support a finding of bad faith registration. The Panel filled this gap only because a prior UDRP decision - Wayfair LLC v. Yang Hong Juan, WIPO Case No. D2018-0666 - had already made that finding, although Complainant did not cite to the decision in the instant Complaint. Had this finding not appeared in a reported case of which the Panel could fairly take judicial notice, the Panel would have resisted the urge to use its own factual investigation and legal analysis to compensate for Complainant’s failure to introduce evidence into the record. It is not enough merely to make unsupported allegations paraphrased from the Policy. Complainant must introduce evidence to support its allegations or risk having its complaint denied.

The Panel appreciates that policing domain name abuse is daunting and that, given Complainant’s prior success enforcing the Policy, it may be tempting to submit barebones complaints and trust the system to ferret out the truth. The Panel admonishes Complainant to introduce sufficient evidence into the record in future proceedings.

Accordingly, the Panel finds that Complainant has satisfied paragraph 4a(iii) 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 <wayfair.app> be transferred to Complainant.

Lawrence K. Nodine
Sole Panelist
Date: October 26, 2018