WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Original Mattress Company, Inc., and The Original Mattress Factory, Inc. v. Dilworth Mattress and I, Inc.
Case No. D2001-0176
1. The Parties
The Complainants are The Original Mattress Factory, Inc., and Original Mattress Company, Inc. both Ohio corporations whose principal place of business is 4390 State Road, Cleveland, Ohio 44134. The Complainants are represented by W. Joseph Melnik and Jeremy Gilman of Benesch, Friedlander, Coplan & Aronoff LLP of 2300 BP Tower 200 Public Square, Cleveland, Ohio 44114-2378, USA.
The Respondents are Dilworth Mattress ("Dilworth"), a South Carolina corporation, whose principal place of business is 242 West Tremont Ave., Charlotte, North Carolina 28203, USA and I, Inc. ("Ivenue"), whose principal place of business is 13115 Barton Road, Suite A, Whittier, California 90605, USA.
2. The Domain Names and Registrars
The domain names at issue are "" and "." The Registrant of the domain name "" is Ivenue. The Registrar of the domain name "" is All West Communications, Inc. d/b/a AW Registry of AW Registry Services, 50 West Main Street, Kamas, Utah 84036-0588, USA. The Registrant of the domain name "" is Dilworth. The Registrar of the domain name "" is Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
The complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 1, 2001, and assigned the case number D2001-0176.
On February 8, 2001, the Complainants were notified of a deficiency in their complaint because, in its Registration Agreement, the Respondents had not submitted to the jurisdiction at the location of the principal office of the Registrar for adjudication of disputes concerning or arising from the use of the domain name "" in accordance with Paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution ("Rules").
On February 12, 2001, the Complainants corrected the deficiency by submitting a Statement of Consent to Mutual Jurisdiction. Pursuant to Para. 2(h)(iii) of the Rules, the Complainants served a copy of the Statement of Consent to Mutual Jurisdiction upon the Respondents by email and courier. WIPO verified that the Complainants satisfied the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Policy"), Rules, and the WIPO Supplemental Rules for Uniform Dispute Resolution Policy (the "Supplemental Rules"), in accordance with paragraph 4(a) of the Policy, and paragraph 5 of the Supplemental Rules. The Administrative Panelist ( the "Panelist") is satisfied that the complaint has met the requirements of the Policy, Rules and Supplemental Rules.
Notification of the complaint and the commencement of the administrative proceedings were delivered to the Respondents electronically by notice dated February 13, 2001. The hard copy of the document was also transmitted by courier and the Panelist has seen the courier receipt. The Panelist is satisfied that the complaint satisfied the Rules and the Supplemental Rules with regard to notification. No response was received by the expiry of the twenty-day deadline of March 4, 2001. Notification of the Respondents� default was given on March 5, 2001, by fax and by email at the two addresses given in the complaint. The Panel has seen a copy of the facsimile reports. The Panel is therefore satisfied that the notification of the Respondents� default was effectively given.
On March 5, 2001, Respondents replied via email to the default notification by stating that they had sent their reply to the Complainants on February 23, 2001. Respondents also stated that the domain name "" had been terminated and released. Respondents also stated that the other disputed domain name, "," had been "deactivated and terminated on December 21, 2000." On March 6, 2001, the WIPO Case Manager forwarded this message to the Complainants requesting that Complainants respond to the statements contained in Respondents� reply.
On March 8, 2001, the Complainants responded via email and stated that following WIPO�s certification of the complaint, the Complainants and Respondents entered into discussions to resolve the arbitration over the disputed domain names. On February 21, 2001, Complainants sent to Respondents a proposed settlement agreement which required that the disputed domain names be transferred to the Complainants. The Complainants stated that the discussions did not resolve the current arbitration and that the disputed domain names are still registered to Respondents.
The Panel, consisting of a single panelist, was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
The Panelist has not received any requests from Complainants or Respondents regarding further submissions, waivers, or extensions of deadlines. The Panelist has not found it necessary to request any further information from the parties, as a consequence of which the date schedule for the issuance of the Panelist�s decision is April 3, 2001.
4. Factual Background
The Complainants are Original Mattress Company Inc. and The Original Mattress Factory, Inc. The Original Mattress Company designs, builds and sells mattresses and mattress accessories through locations across the Eastern United States. Original Mattress Company has nine factories and over 45 factory stores, including stores in Raleigh and Charlotte, North Carolina, through which mattresses are manufactured and sold to customers.
The proprietors of the registration of the service marks "The Original Mattress Factory Outlet," and "The Original Mattress Company" are the Complainants. The Complainants also produced evidence of United States Patent and Trademark Office Registrations for these marks, U.S. Reg. 2,004,066 and U.S. Reg. 2,061,989 respectively. The Complainants have used "Original Mattress," "Original Mattress Company" and "" in developing, marketing, and selling their products. On March 31, 1997, Complainants registered the domain name "." The Complainants have also registered, and direct traffic to, the following domain names: "," "the," and "the."
Respondent Dilworth is a corporation, which sells furniture and furniture accessories. Respondent Ivenue is an e-commerce and web site development company. Apparently, Respondent Dilworth utilized Respondent Ivenue�s services in developing the web site "." Thus, the domain name "" was registered by and remains registered to Ivenue. On June 13, 1999, Respondents registered the domain name "." On August 5, 1999, Respondents registered the domain name "." On September 11, 2000, Respondents registered the domain name "." Both web sites, "" and "," appear currently to be inactive.
5. Parties� Contentions
The Complainants contend:
(i) Complainants assert that the disputed domain names registered by Respondents are identical or confusingly similar to the service marks owned by the Complainants and violate Section 4(a) of the Policy. Specifically, the Complainants contend that Respondents� "" is a "blatant misspelling" of their common law "Original Mattress" and "" marks and other marks. The Complainants further posit that the domain name "" is confusingly similar to Complainants� trade name, and registered and common law trademarks. For example, the Complainants state that "this domain name is a derivation of �Original Mattress Company,� �original mattress,� and �,�" which are common law marks of Complainants, in addition to Complainant�s U.S. Registration No. 2,061,989, which incorporates the "Original Mattress Company" common law mark.
(ii) The Complainants argue that the Respondents have no rights or legitimate interest in the marks. In particular, the Complainants state that the Respondents have never been known by the name "Original Mattress" or any similar name.
(iii) Finally, the Complainants argue that the Respondents have registered and used both of the domain names in bad faith pursuant Section 4(b)(iii) and (iv) of the Policy. The Complainants state that since both Respondents and Complainants have significant presences in the North Carolina market, it is reasonable for Respondents to be aware of the Complainants and their marks. Furthermore, the Complainants argue that with at least this constructive knowledge, by registering the disputed domain names, Respondents "sought to disrupt [Complainants�] business" and to redirect "traffic away from the [Complainants�] web sites." Citing a signed affidavit by an employee of the Complainants, Complainants state that on more than one occasion, customers have called or visited Complainants� locations to purchase products which Complainants do not sell because they had seen the products on Respondents� site after mistakenly believing they were on the Complainants� web site.
Though the Respondents made no formal response, Respondents stated in an email sent to the Center that it had deactivated and terminated both disputed domain names. The Complainants contend that these domain names are still registered to the Respondents, in contrast to Respondents� assertions, and have not been transferred to the Complainants as they have requested.
In the absence of a formal response from the Respondents, there are, of course, no submissions to counter the Complainants� formal submissions. The Panel, therefore, has no alternative but to determine the case on the basis of the Complainants� formal submissions only and to determine whether the Complainants have established their complaint.
6. Discussion and Findings
(i) The domain names registered by the Respondents are identical or confusingly similar to a mark owned by the Complainants.
The Complainants have established that they possess rights in the registered marks THE ORIGINAL MATTRESS COMPANY and THE ORIGINAL MATTRESS FACTORY OUTLET in the United States. These marks are the subject of United States Service mark registrations, U.S. Reg. 2,061,989 and U.S. Reg. 2,004,066 respectively. The evidence provided by the Complainants shows substantial usage of the term ORIGINAL MATTRESS in advertising and web-based activities. Specifically, the Complainants registered the domain name "" on March 31, 1997 and activated the site on October 22, 1999. Complainants have also used the domain name "" to advertise, sell and provide customer support for its products. Though the disputed domain names, "" and "," are not identical to the Complainants�, they are confusingly similar to the marks owned by the Complainants. The domain name "" is a simple misspelling of the Complainants� "" domain name and the Complainants� registered marks. Respondents have only removed one letter from the Complainants� domain name. The disputed domain name "" adds the letters "co" to the Complainants� existing domain name. The disputed domain name is confusingly similar to Complainants� corporate name and registered trademarks.
The Respondents have no right or legitimate interest in the domain names.
There is no evidence that Respondents have any rights or legitimate interest in the domain names. The Respondents do not operate a business, have a corporate name, company, product or offer services under the "Original Mattress" name and have no rights to any trade names or registered trademarks or services marks including the name "Original Mattress." The Respondents are not making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, or to misleadingly divert consumers, or to tarnish the trademark or service mark at issue. On the contrary, it appears that the Complainants and the Respondents are competitors in some markets.
The Complainants have not licensed or authorized the Respondents to use any of its marks or to apply for any domain names incorporating any of those marks. Respondents have filed no formal response to this complaint asserting a legitimate interest in the disputed domain names. Thus, there is no evidence demonstrating that the Respondents have any cognizable rights or legitimate interests in the domain names.
The Respondents have no legitimate interest in the disputed domain names.
The domain names have been registered and are being used in bad faith.
Complainants have produced evidence that the Respondents have registered the disputed domain names. The Panel is satisfied with this evidence.
Respondents have registered domain names that are likely to cause confusion and to misdirect web traffic to Respondents� web sites, which is dedicated to the sale of commercial items in competition with Complainant. The Respondents intentionally chose domain names similar to the Complainants� marks. No evidence has been provided that Respondents had any good faith basis for registering these domain names. Respondents do not operate a business under the names of either domain name and do not appear to sell any product or service under such trade names. Complainants have shown that Respondents, at least with respect to Respondent Dilworth, who uses both domain names, had constructive notice of Complainants� trademarks prior to registering the domain names. The Panel therefore concludes, in the absence of any other evidence, that the domain names were registered in bad faith for commercial gain and to attract consumers to its site. This constitutes bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
The Policy states that certain circumstances may, "in particular but without limitation," evidence bad faith. Specifically, the Policy indicates that bad faith is shown when "by using the domain name, �[has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 you web site or location." Complainants have shown that traffic has been misdirected and that consumers have been confused. Again, in the absence of other evidence, the Panel must assume that it was Respondents� intention to create such confusion. The Panel therefore concludes that Respondents are using the domain names in bad faith.
7. Decision
In light of the foregoing, the Panel decides that the domain names registered by Respondents are confusingly similar to the service marks used by Complainants, that the Respondents have no rights or legitimate interests in respect of the domain name, and that Respondents� domain names have been registered and are being used in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Uniform Domain Name Dispute Resolution Policy, the Administrative Panel requires that registration of the domain names "" and "." be transferred to Complainants.
Timothy D. Casey
Sole Panelist
Dated: April 3, 2001
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