WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Aero Products International v. RankTop5 Optimization
Case No. D2003-0134
1. The Parties
The Complainant is Aero Products International, Wauconda, Illinois, of United States of America, represented by Brinks Hofer Gilson & Lione of United States of America.
The Respondent is RankTop5 Optimization, Michael Sculley, of United States of America.
2. The Domain Names and Registrars
The disputed domain names and are registered with eNom. ("Disputed Domain Names")
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 22, 2003. On February 24, 2003, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On February 24, 2003, eNom 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 February 26, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 18, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on March 19, 2003.
The Center appointed Will Hill Tankersley Jr. as the sole panelist in this matter on April 3, 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.
4. Factual Background
4.1 Complainant Aero Products International, Inc. ("Aero" or "Complainant") is the owner of the federally registered trademark AEROBED and International Class 20 ("inflatable bedding and mattress for indoor and outdoor use") and International Class 28 ("inflatable mattresses for recreational use"). (Application Serial Number 75/616,533). The United States Patent and Trademark Office ("USPTO") has issued a Notice of Allowance approving registration of Aero�s AEROBED letters Mark on Principal Register. Likewise, Complainant owns registrations in seven countries (not including the United States) and has pending applications in the AEROBED Mark in three additional countries. Complainant has made exclusive and continuous use of the trademark AEROBED in interstate commerce since at least as early as March 1999.
4.2 Complainant also owns the federally registered trademark AERO for use in relation to "inflatable furniture and bedding for indoor, outdoor and recreational use; air mattresses for camping; sleeping bags in International Class 20" and "air mattresses for recreational use in International Class 28" (Reg. No. 1,755,357). Complainant has also filed the appropriate documentation with the USPTO to make AERO "incontestable" under 15 U.S.C. � 1065. Complainant�s trademark registration for the trademark AERO shows that the Mark has been used in interstate commerce since 1991. (AEROBED and AERO shall be referred to collectively as "Complainant�s Marks.").
4.3 Further, Complainant has registered ten domain names, which incorporate some portion of the Complainant�s Marks as well as the word "bed."
4.4 Complainant designs, manufactures, advertises and sells a line of inflatable mattresses and bedding under the Complainant�s Marks. Complainant�s product line is also the subject of patent protection. It is undisputed that Aero has spent millions of dollars extensively promoting and advertising inflatable mattresses under the AEROBED Mark.
4.5 Respondents are not a licensee of Complainant. Nor are Respondents authorized to use Complainant�s Marks. Respondents have registered the domain names and (Disputed Domain Names"). The Panel was able to access the disputed domain name at the time this decision was being prepared.
5. Parties� Contentions
A. Complainant
5.1 Complainant has established statutory and common law rights in the Complainant�s Marks.
5.2 Respondent does not contest the Complainant�s characterization of him as a "web page designer and website optimizer."
5.3 On October 4, 2002, Complainant initiated a Uniform Domain Name Dispute Resolution Policy ("UDRP" action against Mattress Liquidation Specialists in which Respondent Sculley was involved (Aero Product, Inc. v. Mattress Liquidation Specialists, WIPO Case No. D2002-0921 (December 17, 2002)). In that previous UDRP action, Respondent Sculley submitted an affidavit stating that he is the person who "design[ed], publish[ed], maintain[ed] and updat[ed] the Internet website that belongs to Mattress Liquidation Specialist known as M. See Exhibit K to Complaint. Moreover, it is clear from this affidavit that Mr. Sculley is in the business of registering domain names including the Disputed Domain Names in this action.
5.4 Respondent Sculley is listed as the contact person for "Rise Above The Crowd" Internet Marketing and RankTop5 optimization. RankTop5 optimization is listed as the registrant of the Disputed Domain Names.
5.5 Subsequent to the Complainant�s filing of the previous UDRP action and without Complainant�s knowledge or permission, Respondent registered the Disputed Domain Names with eNom, Inc.
5.6 Complainant contends (and the Respondents do not dispute) that respondents have registered the domain names for a variety of well-known mattress manufacturers. Complainant alleges that on information and belief that the respondent has no rights or permissions to use those trademarks.
5.7 Complainant further alleges that the results of the above-referenced Aero Products v. Mattress Liquidation matter was resolved in Complainant�s favor. Subsequent thereto, the Complainant telephoned Respondent Sculley and asked that he transfer the disputed domain name to Complainant. Respondent Sculley refused and stated that he intended to transfer the domain name to an undisclosed client.
5.8 Complainant alleges that this undisclosed client, on information and belief, was Mattress Liquidation Specialist. The Respondent never transferred the domain names and as yet has not used the domain names except to direct Internet traffic to place older web pages of links to miscellaneous goods and services.
B. Respondent
The Respondent did not reply to the Complainant�s contentions.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy ("UDRP" or "Policy"), adopted by the Internet Corporation for assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceedings.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The UDRP, and the Rules for the UDRP (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 The Center forwarded notification of the complaint to the Respondents via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. The Center also forwarded notification of default to the Respondents via email.
6.4 Based on the methods employed to provide the Respondents with notice of the Complaint and default, the Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondents of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondents to furnish a reply is not due to any omission by the Center.
6.5 Paragraph 4(a) of the UDRP sets forth three elements that must be established by a Complainant to merit a finding that Respondents have engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondents� (disputed) domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the domain name; and
(iii) Respondents� (disputed) domain names have been registered and is being used in bad faith.
In the administrative proceeding, the Complainant must prove that each of these three elements are present.
6.6 As the Respondents have failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, (February 29, 2000).
A. Identical or Confusingly Similar
6.7 Based upon the Complainant�s continuous use of the AERO and AEROBED Marks since at least as early as 1991 and 1998 (respectively) as well as trademark registrations with the USPTO and a variety of countries around the world, the Complainant clearly has statutory and common law rights in the Complainant�s Marks.
6.8 Complainant asserts that the Disputed Domain Names are virtually identical, and therefore confusingly similar, to the Complainant�s Marks.
6.9 Although the Disputed Domain Names are not precisely identical to the Complainant�s Marks, the Panel agrees that the Disputed Domain Names and the Complainant�s Marks are confusingly similar. The only differences between the Disputed Domain Names and the Complainant�s Marks are a hyphen, double use of the word "aero" and the use of the plural form of "bed." These are trivial differences.
6.10 The Panel finds the Disputed Domain Names are confusingly similar to the Complainant�s Marks, and that the Complainant has established it has rights in the Complainant�s Marks pursuant to paragraph 4(a)(i) of the UDRP.
B. Rights or Legitimate Interests
6.11 Paragraphs 4(c) of the UDRP lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent�s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark of service mark at issue.
6.12 There is no evidence in the record that would indicate that Respondents have any rights or legitimate interests in respect of the Disputed Domain Names.
6.13. The Panel finds that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names pursuant to paragraph 4(a)(ii) of the UDRP.
C. Registered and Used in Bad Faith
6.14. Paragraph 4(b) of the UDRP lists several factors, 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. In particular, paragraph 4(b) states:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a patter of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product or service on your website or location.
6.15 From the uncontested facts set forth in the Complaint, Respondents clearly registered and used the domain name in bad faith. Respondents plainly knew of Complainant�s rights in the Complainant�s AERO and AEROBED registered trademarks as a result of a previous UDRP action by the Complainant in which Michael Sculley, one of the Respondents in the present action, submitted an affidavit. Respondents have threatened to transfer the Disputed Domain Names to a third party. Additionally, Respondent Sculley holds himself out as someone who constructs websites for mattress vendors and accordingly the Disputed Domain Names confer a commercial gain on Respondents.
6.16 The Panel finds the Complainant has established that the Respondent registered and used the Disputed Domain Names in bad faith, pursuant to paragraph 4(b)(iv) of the UDRP.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be transferred to the Complainant.
Will Hill Tankersley Jr.
Sole Panelist
Dated: April 17, 2003
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