WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Advanced Comfort Inc. v. A
Case No. D2003-0017
1. The Parties
The Complainant is Advanced Comfort Inc., Michael Zippelli, President, of NY 12524, of United States of America, represented by Collen IP of United States of America.
The Respondent is A, of CO 80123, United States of America, represented by Kamlet Shepherd Reichert & Edgington, LLP of United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT trading as Internet Name Worldwide.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 8, 2003. On January 9, 2003, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On January 10, 2003, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 14, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 3, 2003. The file transmitted by the Center to the Panel contains no indication that the courier mailing sent to Respondent�s address, as indicated in its domain name registration, was unsuccessful. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on February 4, 2003.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 12, 2003. 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.
By email of February 13, 2003, Respondent advised the Center that it had first received notice of the Complaint in an email from the Center received on that date, and requested a copy of the Complaint and an opportunity to respond. The Center forwarded this request to the Panel. The Panel via the Center advised the parties that Respondent would have a period of fourteen calendar days from the date of the Center�s communication to file a Response. The Panel requested that Respondent in its Response explain the reason for its apparent failure to receive the courier mailing of the Complaint. A Response was received by the Center from Respondent within the time period specified in the extension granted by the Panel.
The Panel notified the parties via the Center that the due date for its decision was extended until March 24, 2003.
4. Factual Background
Complainant is the holder of two service mark registrations for the term "ABED.COM" on the Principal Register of the United States Patent and Trademark Office (USPTO) (Reg. No. 2,463,230, dated June 26, 2001, in International Classes (IC) 35 and 42, covering, inter alia, "online ordering services in the field of mattresses, pillows, bedding and waterbeds", claiming date of first use in August 1996, and first use in commerce in September 1996, application filed March 16, 1999, and Reg. No. 2,542,400, dated February 26, 2002, in IC 35, covering "retails stores featuring furniture, namely beds, mattresses, pillows and bedding", claiming date of first use and first use in commerce of February 20, 1999, application filed April 24, 2000). (Complaint, para. 11 & Annex 4)
Complainant asserts that it registered the domain name on June 3, 1996, "and has been actively using the website hosted at that Internet address to conduct business."
According to the Registrar�s Verification to the Center, "a" is the registrant of the disputed domain name, . According to the Registrar�s Verification, the record of registration for the disputed domain name was created on July 26, 2002.
Respondent registered the disputed domain name with the intention of developing and maintaining, and does in fact maintain (from July 2002), an active commercial Internet website at URL "www.a". The home page at the website indicates that Respondent is an "authorized dealer" for "aero®". Respondent�s home page banner refers to "AeroBed � A Bed Store". Respondent asserts that it is the "world�s largest online retailer of Aero brand products", and derives significant revenues from the website identified by the disputed domain name. Respondent sells only "Aerobeds" and ancillary products at its website, and no other brand of bed. According to Respondent, Complainant does not promote or sell "Aerobeds" or other inflatable beds via its website. (Response, para. 10 & Annex 5)
The Registration Agreement in effect between Respondent and Melbourne IT trading as Internet Name Worldwide subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name Registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties� Contentions
A. Complainant
Complainant asserts that it holds rights in the trademark "ABED.COM" as evidenced by two registrations with the USPTO, and that it has been using this mark in commerce in connection with the sale of mattresses, bedding and ancillary services since September 1996, including at a website using the mark as its address.
Complainant argues that the disputed domain name is confusingly similar to its mark, and that the addition of a generic word to its mark does not sufficiently distinguish the disputed domain name from its mark (citing Kabushiki Kaisha Toshiba d/b/a/ Toshiba Corporation v. Distribution purchasing & logistics Corp., Case No. D2000-0464 (WIPO 2000). Complainant asserts that Respondent does business in the same line of commerce.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name, stating:
"There is no evidence of the Respondent having used the mark ABEDSTORE, ABEDSTORE.COM, or any other mark or domain name that is confusingly similar to the ABED.COM mark prior to the use in commerce and registration of the ABED.COM mark and the registration of the domain name by the Complainant.
Therefore, Respondent does not have any rights, developed through use, in the mark ABEDSTORE.COM, or any other mark or domain name that is confusingly similar to the ABED.COM mark, prior to its registration of the domain name registered in 2002. Decisions made under the UDRP have held that a registrant has an implied duty to conduct at least a minimal trademark search to verify that what it considers generic is not in fact a registered trademark. See Marketing Mix, Inc. v. Mix, D2000-0352 (WIPO 2000). �. Had the Respondent conducted such a search, they would have found the registrations of the Complainant, Advanced Comfort.
Respondent�s use of the domain name also does not constitute fair use of the mark ABED.COM. There is also no evidence of any registration or any other rights the Respondent may have in marks such as ABED.COM, or any other confusingly similar mark or domain name."
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by intentionally diverting Internet users to its website for commercial gain by creating confusion as to Complainant�s sponsorship of or affiliation with its site, and also by seeking to disrupt the business of a competitor.
Complainant asserts that Respondent had an implied duty,
"to conduct at least a minimal trademark search to verify that what it considers generic is not in fact a registered trademark. See � Marketing Mix, Inc. v. Mix, D2000-0352 (WIPO 2000). Had the Respondent conducted such a search, they would have found the registrations of the Complainant, Advanced Comfort. This breach of this duty constitutes an additional basis on which bad-faith may be found."
Complainant requests the Panel to direct the registrar to transfer the disputed domain name to it.
B. Respondent
Respondent argues that Complainant�s asserted trademark is a generic term in which it does not hold rights. Respondent states in its own words:
"Complainant�s registered service mark, �ABED.COM� is a generic term, which cannot function as a mark because it refers to a �genus of which the particular product is a species.� See, Pet Warehouse v. P, Inc., Case No. D2000-0105 (WIPO 2000)... Such generic terms are not entitled to trademark protection. America Online, Inc. v. AT&T Corp., 243 F.3d 812, 820 (4th Cir. 2001) (�When words are used in a context that suggest only their common meaning, they are generic and may not be appropriated as exclusive property.�); Leejay, Inc. v. Bed Bath & Beyond, 942 F. Supp. 699, 701 (D. Mass. 1996) (denying plaintiff�s claim that the words �bed & bath� should be protected; �[i]f they are just a generic term for a class of goods, the words themselves are not entitled to trademark protection.�); Duluth News-Tribune v. Mesabi Publishing Co., 84 F. 3d 1093, 1096 (8th Cir. 1996) (�A generic term is one that is used by the general public to identify a category of goods, and as such merits no trademark protection.�); Convenient Food Mart, Inc. v. 6-Twelve Convenient Mart, Inc., 690 F. Supp. 1457, 1462-1464 (D. Md. 1988) (denying trademark infringement claim; the term �convenient� as used in both parties� food store trade names was simply a common description of a particular type of retail service, and thus, term was generic and not protected by trademark laws for exclusive use). Complainant obtained protection on two generic words, �a� and �bed,� each of which, standing alone, has no significance or proprietary value. Significantly, the term �bed� (and many other variations thereon) in connection with products identical to those that Complainant sells, is used both in the United States and throughout the world by thousands of businesses that compete with Complainant (i.e., , ). Respondent�s use of the three generic words �a,� �bed� and �store� simply constitutes a similar use of the same generic terms that is based, not on any intentional copying of Complainant�s mark, but rather, on a reasonable, good faith belief that the terms are generic and therefore, not protected � just as and have commenced similar businesses.
"Complainant cites Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp. in support of its allegations that Respondent�s addition of the word �store� to its domain name is �an irrelevant distinction that does not change the likelihood of confusion.� That case is distinguishable. In Kabushiki, the Panel determined that the mark �Toshiba,� standing alone, is famous and well-known, has been used by its owner substantially and continuously for over 48 years on products and services throughout most of the world, and is connected with significant goodwill and value. Here, Complainant did not receive protection on the mark �ABED.COM� until June 26, 2001. Further, the generic terms �a� and �bed,� unlike �Toshiba,� are clearly recognizable and commonly used without regard to Complainant�s business or products. In addition, unlike Toshiba, which is the corporate name of its business, ABED is not the corporate name or a registered trade name under which Advanced Comfort conducts business. The use of Complainant�s mark simply does not rise to the level of recognition received by the Toshiba mark.
"Finally and importantly, there is no likelihood of confusion here because, unlike the Toshiba mark at issue in Kabushiki, Complainant and Respondent do not sell the same products. Respondent sells only one brand of one distinct product at its domain address -- Aero inflatable beds. Complainant does not sell Aero or any other inflatable beds. Complainant has not provided any evidence of marketplace confusion with respect to the disputed domain name. It cannot because its protected mark identifies nothing more than a product or service, rather than the source or identity of a particular model or brand. See Interactive Television Corp. v. N, Case No. D2000-0358 (WIPO 2000)�; Tough Traveler, Ltd. v. Kelty Pack, Inc. Mike Scherer, and Inkling Pen Co., Case No. D2000-0783 (WIPO 2000)� Unlike the parties in Kabushiki who both sold Toshiba products, Respondent and Complainant are selling distinct products to different markets. As such, there can be no likelihood of confusion. See Interstellar Starship Serv., Ltd. v. Epix, Inc., 304 F.3d 936, 941-946 (9th Cir. 2002) (computer enthusiast�s use of the domain name did not cause a likelihood of initial interest confusion among consumers with respect to a trademark holder�s use of �EPIX� trademark in connection with printed circuit boards and computer programs because, among other reasons, the website�s content was extraordinarily different from the trademark holder�s digital imaging product); NVST.com, Inc., v. Nvest, LLP, 2002 WL 460221 at *4 (9th Cir. 2002) (not selected for official publication)(�[r]elated goods are generally more likely than unrelated goods to confuse the public as to the producers of the goods"� and �the two companies market to entirely different clienteles�); Cohn v. Petsmart, Inc., 281 F.3d 837, 841-842 (9th Cir. 2002) (denying veterinarian�s trademark infringement claim because he failed to show that pet supply store chain�s use of veterinarian�s trademark created a likelihood of confusion � while the parties sold related goods and services, consumers would encounter the trademarks differently in the marketplace and the veterinarian presented no evidence of actual confusion); Lang v. Retirement Living Publishing Co., Inc., 949 F.2d 576, 581 (2nd Cir. 1991) (similarity between the name �New Choices Press� used by a publisher of a book on charisma, and �New Choices for the Best Years,� used by the publisher of a magazine on retirement living, did not create a likelihood of consumer confusion). Absent any showing of potential marketplace confusion, Complainant�s claim fails." (Response, para. 10)
Respondent asserts that it has rights and legitimate interests in the disputed domain name because (a) it is making use of the name in connection with an active commercial website; (b) it made good faith preparations to use the website for a bona fide offering of goods prior to registration of the domain name and commencement of this action by Complainant, and; (c) it is selling different products than Complainant, which constitutes fair use of the domain name. Respondent asserts while it may have an implied duty to conduct a minimal trademark search prior to registration of a domain name, a search of "abedstore", "bedstore", "bed store" or "a bed store" "would not have revealed Complainant�s registration".
Respondent argues that the disputed domain name was not registered or used in bad faith because (a) it did not intend to sell it to anyone; (b) it has not engaged in a prohibited pattern of conduct; (c) it has not attempted to disrupt Complainant�s business or create a likelihood of confusion with its mark because Respondent sells only a specific brand and type of bed that is not sold by Complainant, and operates in a separate and distinct market.
Respondent requests the Panel to reject Complainant�s claims and deny it relief.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.
It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy and Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).
As a preliminary matter, the Panel notes that Respondent failed to file a response within the period initially provided for its filing in accordance with the Rules (para. 5(a)). Respondent has indicated that its email and physical addresses were changed subsequent to registration of the disputed domain name. In fact, the physical address for Respondent indicated on its website home page differs from that indicated in its registration data. Although Respondent is required by the terms of its registration agreement to update contact information during the registration period, there is no evidence that it willfully failed to do so within a reasonable period, particularly in light of the fact that its present physical address is prominently displayed on its website home page. The Rules encourage panels to "ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case" (para. 10(b)). In the circumstances of this proceeding the Panel considered it appropriate to authorize, and accepts, Respondent�s late filing of its Response.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent�s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
In order to prevail in this proceeding, Complainant must demonstrate that it has rights in a trademark or service mark, and that the disputed domain name is identical or confusingly similar to that mark. Complainant asserts rights in the service mark "ABED.COM" and the confusing similarity of the disputed domain name .
Complainant asserts rights in a service mark based on its use in commerce in the United States, and with a presumption of rights in the mark established by its registration at the USPTO (see Factual Background supra).
The Panel has serious doubts regarding Complainant�s asserted rights in the term "ABED.COM" as a service mark. In a just-completed Administrative Proceeding involving Complainant and a different respondent, this sole panelist avoided making a determination as to whether the respondent had succeeded in establishing the generic nature of the asserted mark because the respondent had demonstrated rights or legitimate interests in the disputed domain name. In that just completed proceeding, this sole panelist stated:
"The facts in this proceeding raise difficult questions regarding whether Complainant has rights in a service mark. As Respondent is aware, the registration of a service mark on the Principal Register at the USPTO establishes a presumption of rights in the mark under U.S. law[1], although that presumption may be rebutted. Respondent argues that �bed� is a generic term that cannot serve as a service mark in connection with the sale of bedding, and that addition of the indefinite article �a� does not affect the generic character of the claimed mark. Respondent further points to a recent decision of the U.S. Trademark Trial and Appeal Board, In re Martin Container Inc., 65 USPQ2d 1058 (June 11, 2002), deciding that a top level domain name indicator such as �.com� has no source identification function and cannot serve any trademark purpose (citing, inter alia, McCarthy on Trademarks). The TTAB stated, �� neither the generic term nor the domain name indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability� (id. at 1061) .The decision of the TTAB was rendered subsequent to registration of Complainant�s asserted mark.
"The USPTO registered Complainant�s asserted mark. The Panel approaches the prospect of differing with a decision of the USPTO with reluctance. Because it is not necessary to make a determination as to whether Complainant has rights in its claimed service mark to dispose of this case, the Panel will not make a determination on that issue. Even if Complainant has the rights in the mark it asserts as evidenced by its registrations at the USPTO, and even if the dispute domain name is confusingly similar to the mark (without so deciding), Respondent will prevail." (Advanced Comfort Inc. v. iNET image, Inc., Case No. D2003-0016, decided February 24, 2003.)
In the present proceeding, Respondent also argues that Complainant�s asserted service mark is generic, and that in consequence Complainant cannot establish rights in the term. Prior WIPO Administrative Proceedings to which Respondent refers include one instance in which a panel found that a Complainant had failed to establish rights in a registered word and design mark based on Respondent�s overcoming the presumption of validity through demonstration of the potentially generic nature of the alleged mark. In that case, a subsequent application by the complainant to register the same term as a mark was rejected by the USPTO based, inter alia, on the generic character of the term. The panel said that it was rejecting the complainant�s claim to rights in a mark (i.e., "Interactive Television") based on "serious questions" as to whether it had rights, and that "the ultimate decision as to whether Complainant does or does not have proprietary rights is better left to a court or trademark office tribunal" (Interactive Television Corporation v. N, Case No. D2000-0358, decided June 26, 2000). The quoted language regarding the ultimate decision appeared earlier in Pet Warehouse v. Pets.Com, Case No. D2000-0105, decided April 13, 2000, (also cited by Respondent here)[2]. The Pet Warehouse case involved a claim of common law rights in mark as to which registration had been denied by the USPTO, and in that sense is distinguished from the subsequent Interactive Television case in which the mark was once-registered by the USPTO, and a subsequent application to register the same term rejected.
Respondent in this proceeding has presented substantial support in U.S. federal court precedent that the term "ABED.COM" should be considered generic and therefore is not capable of serving a service mark function (accord federal court precedent cited in Pet Warehouse, as well as In re Martin Container Inc., supra). The Panel, however, does not consider it necessary to make its determination on that basis, and thus in effect to determine that the presumption established by federal registration has been overcome.
The Panel finds that in the circumstances of this proceeding, the asserted mark "ABED.COM" and the disputed domain name are not confusingly similar. Complainant has chosen an asserted mark consisting of two manifestly generic terms. If it is a service mark, it is an especially weak one, and such protection as it might afford is exceedingly thin. There is a small pool of terms that makers and sellers of beds and bedding products might use to identify their businesses and products without using the term "bed". If a service mark applicant (seller of beds) can succeed in registering the term "bed" at the USPTO by placing the indefinite article "a" in front of it, another applicant or junior user should be able to distinguish its services by adding "store" at its end. Consumers and Internet users in the United States are unlikely to believe that Complainant is the exclusive "a bed" seller of bed and bedding products on the Internet or elsewhere, and will not be confused when "a bed store" turns out to be an enterprise other than Complainant.
Respondent has appropriately distinguished Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp, Case No. D2000-0464 (WIPO 2000), which held that adding a common descriptive or generic term (such as "store") to a trademark or service mark generally does not serve to prevent consumer confusion. This sole panelist has rendered a number of similar decisions. However, in these earlier cases (see, e.g., General Electric Company v. F, Inc., Case No. D2000-0394, decided June 22, 2000), the underlying mark was one that would be recognized by consumers and Internet users as distinguishing the goods or services of one enterprise from another. Consumers and Internet users therefore would be confused by the addition of a common descriptive or generic term. In this proceeding, Complainant�s asserted mark is so weak that identification by consumers and Internet users with Complainant, if any, will be dispelled by the addition of another generic term, i.e., store.
The Panel finds that whether or not Complainant holds rights in the service mark "ABED.COM", the disputed domain name is not confusingly similar to it. Complainant has therefore failed to establish the first element necessary for a finding that Respondent has engaged in abusive registration and use of the disputed domain name. The Panel declines to instruct the registrar to transfer the disputed domain name.
In light of the foregoing determination, the Panel will refrain from considering the issues of rights or legitimate interests and bad faith.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: March 24, 2003
1. 15 USC�1115(a).
2. This sole panelist served as presiding panelist in the Pet Warehouse case.
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