WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED
Case No. D2008-1036
1. The Parties
The Complainant is Mancini's Sleepworld of Livermore, California, United States of America.
The Respondent is LAKSH INTERNET SOLUTIONS PRIVATE LIMITED of Mumbai, India.
2. The Domain Name and Registrar
The disputed domain name, (the “Domain Name”), is registered with Lead Networks Domains Pvt. Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2008.
On July 4, 2008 the Center sent an email communication to the Complainant drawing the Complainant's attention to various deficiencies in the Complaint as lodged. One of the points made by the Center was that it was incumbent on the Complainant to demonstrate trademark rights. The Center also drew the Complainant's attention to various resources made available on the Center's website to assist parties to UDRP disputes, including the WIPO Overview of WIPO Panel view on selected UDRP decisions.
On July 10, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 29, 2008, after several reminders the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 30, 2008 to notify the Complainant of deficiencies in the Complaint and providing the registrant and contact information disclosed by the Registrar, inviting the Complainant to submit an amendment to the Complaint.
The Complainant filed an amendment to the Complaint on August 8, 2008. The Center verified that the Complaint together with the amendment to the Complaint satisfied (at least on a prima facie basis insofar as the substantive pleadings were covered) 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 August 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was September 7, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 8, 2008.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 19, 2008. 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 Respondent not having responded, the only facts before the Panel are those set out in the Complaint. While the Complainant produces independent evidence to demonstrate how the Domain Name has been used, the Complaint contains nothing in the way of evidence to support the Complainant's claims in respect of itself, which in the Complaint are that:
a) the Complainant is a sleep products retailer based in California, United States of America;
b) the Complainant has traded for over 36 years;
c) the Complainant has common law rights in respect of the name “Mancini's Sleepworld”.
The Domain Name is connected to what appears to be a directory website featuring advertising links, most of which are specific to the Complainant's claimed area of business. One of them is labeled ‘Mancinis Sleep World' and another is labeled ‘Mancinissleepworld'.
5. Parties' Contentions
A. Complainant
The Complainant contends that the Domain Name is identical to its common law trade mark, MANCINI”S SLEEPWORLD, the name under which it claims to have traded as a ‘sleep products retailer' in California for over 36 years.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant has granted no permission to the Respondent to use the Domain Name. There is no justification for the Respondent having adopted the Domain Name. The Respondent is using the Domain Name, a name with which it has no connection, to divert Internet users to the Complainant's competitors for commercial gain.
On the same basis the Complainant contends that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
B. Respondent
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following elements:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name has been registered in bad faith and is being used in bad faith.
B. Identical or Confusingly Similar
There is no question but that the Domain Name (absent the generic domain suffix) is identical to Mancini's Sleepworld, the name in respect of which the Complainant claims common law rights. The issue is as to whether or not the Complainant has demonstrated the existence of those rights.
The Center's website helpfully includes various resources intended to assist participants in administrative proceedings under the Policy. One of these resources is the Index of WIPO UDRP decision which is broken down into categories, one of the search categories being ‘Unregistered mark'. A review of the cases identified in that category makes it very clear what panelists expect of complainants seeking to establish that they have common law or unregistered rights in respect of a given name or mark.
Another resource available on the Center's website is the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”. This document lists a number of questions, which commonly arise in these proceedings, and provides an overview of panelists' approaches to those questions. Question 1.7 is: What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights? The answer provided reads as follows:
Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant's rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
The section of the Complaint, as originally filed, dealing with the issue of the Complainant's rights in respect of the name, MANCINI”S SLEEPWORLD, reads: “Mancini's Sleepworld. Sleep products retailer in California, USA for over 36 years.”
As previously noted, on receipt of that version of the Complaint, the Center sent an email communication to the Complainant to draw attention to the fact that the Complaint appeared deficient in this respect (amongst others). The Center indicated to the Complainant inter alia that it was incumbent on the Complainant to establish trademark rights (whether of a registered or unregistered nature), and went on to draw specific attention to the Index and Overview referred to above, in each case providing a link to the relevant pages of the Center's website.
The amended version of the Complaint, which was submitted after the above-referred information was communicated to the Complainant by the Center, puts the Complainant's case on this topic in the following terms:
“Mancini's Sleepworld is a sleep products retailer in Northern California and has been in operation for over 36 years. Mancini's Sleepworld reserves common law trade mark rights on the name “Mancini's Sleepworld” on the basis of historical usage.”
The amended Complaint contains nothing by way of text or exhibits to support the Complainant's claim to common law rights in respect of the name “Mancini's Sleepworld”. The Complainant has made no effort to support its claims with any evidence.
In these circumstances, the Panel finds that the Complainant has failed to prove that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights, and for this reason the Complaint must fail.
C. Rights or Legitimate Interests
In light of the Panel's finding under the previous head, it is unnecessary for the Panel to address this issue.
D. Registered and Used in Bad Faith
In light of the Panel's finding under B above, it is unnecessary for the Panel to address this issue.
7. Decision
For all the foregoing reasons, the Complaint is denied.
Tony Willoughby
Sole Panelist
Date: September 30, 2008
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