WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Serta Inc. v. Charles Dawson Case No. D2008-1474 1. The Parties
The Complainant is Serta Inc. of Hoffman Estates, Illinois, United States of America, represented by Drinker, Biddle & Reath, LLP, United States of America.
The Respondent is Charles Dawson of Oak Ridge, North Carolina, United States of America, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2008. On October 3, 2008, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the dispute domain name. The same day, GoD, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant. 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 October 7, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2008. The electronic version of the Response was filed with the Center on October 23, 2008. Between October 28-30, 2008, the Center exchanged several emails with Respondent in which Respondent indicated that he did not wish to disclose sensitive information contained in the Response with Complainant. The Center suggested that Respondent redact this information from the version of the Response that would be sent to Complainant, and on October 30, 2008, the Center received redacted and unredacted hardcopy versions of the Response. The Center indicated that it would be up to the Panel to decide how to treat the redacted information.
The Center appointed David H. Bernstein as the sole panelist in this matter on November 6, 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
Complainant is a major marketer and seller of mattresses and mattress-related products in the United States and around the world. It owns several federal registrations for the SERTA trademark, including, among others, United States Registration Nos. 582,461, 1,864,743, 2,041,918, and 2,041,919. It also owns the domain names , , and , from which it sells SERTA-branded products. In the last five years alone, Complainant has sold in excess of $3.8 billion in mattresses and mattress-related products under the SERTA trademark in North America and has expended over $700 million marketing these products.
Respondent is an individual living in North Carolina who has worked in the mattress industry for many years.
The domain name resolves to a parking page hosted by GoD, Inc., which contains sponsored page-per-click links (“PPC”) to mattress-related websites, including websites dedicated to SERTA products, websites of sellers of SERTA and other mattress-related products, and websites of sellers of exclusively non-SERTA mattress-related products.
On July 21, 2008, Complainant's attorneys sent a letter to Respondent requesting that he deactivate the domain name and assign the registration to Complainant. Respondent replied the same day, stating that he did not understand why Complainant believed he was trying to profit from the listing and that he listed the site in good faith. 5. Parties' Contentions A. Complainant
Complainant contends that the domain name contains Complainant's federally-registered SERTA trademark in its entirety, thereby satisfying Paragraph 4(a)(i).
Under Paragraph 4(a)(ii) Complainant contends that Respondent lacks any legitimate rights or interest in the domain name for several reasons: (1) Respondent is not, and has never been, authorized to use the SERTA trademark; (2) there is no evidence that, prior to notice of the dispute, the Respondent used or made preparations to use the domain name in connection with a bona fide offering of goods and services; (3) Respondent has registered the domain name in order to attract Internet users to his website and then collect revenue through sponsored links; (4) is not Respondent's name, nor can it be considered his business or trade name; and (5) upon information and belief, Respondent obtained the domain name with full knowledge of Complainant's prior use and ownership of the SERTA trademark.
Under Paragraph 4(a)(iii), Complainant contends that Respondent has registered the domain name in bad faith because Respondent registered the domain name with the intention of creating a parking page with sponsored PPC links that take advantage of internet users seeking SERTA goods and services. According to Complainant, past WIPO cases have found bad faith in similar circumstances. See Express Scripts, Inc. v. Windgather Investments Ltd./Mr. Cartwright,WIPO Case No. D2007-0267; Roust Trading Limited. v. AMG LLC,WIPO Case No. D2007-1857. Upon information and belief, Complainant also alleges that Respondent is a Senior Vice President of National Accounts at Sealy, Inc., one of Complainant's primary competitors, and has registered the domain name for the purpose of disrupting Complainant's business. B. Respondent
Respondent contends that the allegations in the Complaint are “totally inaccurate” for the following reasons:
(i) At one point, he was authorized to use the SERTA trademark as president/owner of a Florida mattress reseller.
(ii) He has made preparations to use the domain name in connection with retail sales by forming a North Carolina corporation to “explore Retail Specialty Stores” in April 2008 and applying for two federal trademark registrations that would serve as the names of these Retail Specialty Stores.1 He has incurred over $100,000 in expenses exploring potential markets and in legal fees during the year 2008.
(iii) He does not “own” the website “www.”, and it is registered with Network Solutions LLC, with whom he has no association.2
(iv) He was a Senior Vice President at Sealy Mattress Company for 22 years but is no longer employed by the company since he resigned on January 31, 2008. 6. Discussion and Findings
As a preliminary issue, the Panel notes that Respondent submitted some material in confidence, and a redacted version of the Response was sent to Complainant. However, there is no provision under the Policy, Rules or Supplemental Rules for submission of confidential information that is shared only with the Panel and not also with Complainant. Moreover, most of the information that Respondent redacted—namely trademark filings and corporate names is in any event public. The remainder, such as the terms of his resignation from Sealy, Inc., have no bearing upon the Panel's decision. Thus, the Panel has decided to disregard the unredacted materials that were submitted only to the Panel, and not to the Complainant, and instead has considered only the redacted materials in rendering its decision.3
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the “Policy”) have been satisfied, namely:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) the Domain Name has been registered and used in bad faith A. Identical or Confusingly Similar
Complainant easily satisfies its burden under Paragraph 4(a)(i). Complainant owns at least four federally-registered trademarks incorporating the SERTA mark. The disputed domain name contains the SERTA mark in its entirety, and the addition of the descriptive phrases “I love my” is insufficient to change the fact that the domain name is confusingly similar to Complainant's trademark. See Revlon Consumer Products Corporation v. Brandy Farris,WIPO Case No. D2003-0291 (June 4, 2003) ( confusingly similar to REVLON trademark). B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several ways in which a respondent may demonstrate rights or a legitimate interest a domain name:
(i) before any notice of the dispute, Respondent's use of, or demonstrable preparations to use, the domain or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) Respondent is 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 or service mark at issue
Although the Policy places the burden on Complainant to establish the absence of rights or legitimate interest in the disputed Domain Name, panels long have recognized the inherent difficulties of proving a negative. Accordingly, the consensus view is that Complainant need only put forward a prima facie case that Respondent lacks rights or a legitimate interest, whereupon the burden of production shifts to Respondent to allege specific facts establishing rights or a legitimate interest. See, e.g., World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306 (January 24, 2001); WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.1. The burden of proof, however, always remains on the Complainant.
Here, Complainant has sufficiently pled a prima facie case of illegitimacy. It has shown that Respondent is not associated with any business named “I Love My Serta,” has no present authorization to use the SERTA trademark, and is currently using the disputed domain name illegitimately as a parking page with PPC links to Complainant's competitors. See, e.g., Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (December 10, 2007) (use of parked page to link to complainant's competitors is illegitimate); Owens Corning v. NA,WIPO Case No. D2007-1143 (October 1, 2007) (same). The burden therefore shifts to Respondent to establish its rights or legitimate interests in the disputed domain name.
Respondent, in response, essentially argues that he has a legitimate interest in the domain name because he has made demonstrable preparations to use the domain name in connection with the bona fide offering of good or services. See paragraph 4(c)(i) of the Policy. In particular, Respondent's asserts that he (1) worked in the mattress industry for over twenty years, including as a former executive of a major mattress manufacturer; (2) registered a North Carolina corporation to pursue a retail business and intends to sell SERTA mattresses as part of that business; and (3) applied for at least two federal trademarks in connection with this retail business.
It is true that, under certain circumstances, a reseller of trademarked products may legitimately register a domain name incorporating that trademark. Shaw Industries Group, Inc. and Columbia Insurance Company v. DomainsByProxy, Inc. and Patti CaseyWIPO Case No. D2007-0555 (August 3, 2007) (finding a demonstrable intent to make bona fide offering of Complainant's goods even though domain name was presently parked). The majority viewpoint on a reseller's right to register a trademark as a domain name was first laid out by the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (Nov. 6, 2001); See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions § 2.3. Under Oki Data, the offering of trademarked goods and/or services in connection with a complainant's trademark is bona fide if (1) respondent actually offers the goods or services at issue; (2) respondent uses the website to sell only the trademarked goods (to avoid a bait-and-switch of prospective customers); (3) respondent takes step to avoid confusion by making clear that it is not the trademark owner and accurately disclosing its relationship, if any, with the trademark owner; and (4) respondent does not corner the market in all domain names or deprive the trademark owner of reflecting its own mark in a domain name. These factors apply regardless of whether there is any contractual relationship between respondent and the trademark owner. See, e.g., Volvo Trademark Holding AB v. Auto Shivuk,WIPO Case No. D2005-0447 (June 8, 2005); Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481 (August 20, 2004).
However, even if Respondent does intend in the future to use the domain name in a manner consistent with the Oki Data standard, a mere intention is not sufficient; rather, under the Policy, a Respondent must show “demonstrable” preparations to use the domain name. See Australian Trade Comm. v. Matthew Reader,WIPO Case No. D2002-0786 (November 12, 2002) (although business plans indicated interest in a generic domain name, they failed to show interest in particular domain name in dispute). Respondent has not submitted sufficient evidence to “demonstrate” that his efforts have moved beyond mere intention. The panel can only speculate as to how, or even whether, the disputed domain name would be integrated into Respondent's business plans. For example, even if the Panel accepted Respondent's assertions that it intends to sell SERTA products in the future, there is nothing in the record to indicate whether Respondent also intends to sell other brands and whether its website (no mockups or drafts of which have been submitted) will accurately describe Respondent's relationship with Complainant. When confronted with a similarly hypothetical conformity to Oki Data, the panel in Owens Corning refused to do so and explained:
“Where an entity intends to argue that it is entitled to use a domain name in relation to genuine products it is incumbent upon that entity to bring evidence before the panel to the effect that the domain name has been, or will be, used in a manner that satisfies the conditions of use laid down in Oki Data. The Respondent has brought no such evidence before the panel in this case”.
Particularly in a case such as this, where Respondent is illegitimately using the disputed domain name for a PPC parking page, this Panel declines to conjecture some future use that is in full conformity with the Policy, and, in any event, such use cannot cure the illegitimate use of the PPC parking page pending the implementation of Respondent's plans. See Champagne Lanson v. Development Services/MailP, Inc.,WIPO Case No. D2006-0006 (March 20, 2006) (even if domain name was intended to be used for a legitimate vanity email service, the temporary use in connection with a PPC parking page renders the use illegitimate).
The Panel therefore finds that Complainant has met its burden under Paragraph 4(a)(ii) to establish that Respondent lacks any rights or legitimate interests in the domain name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that [respondent has] registered or 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 [respondent's] documented out-of-pocket costs directly related to the domain name; or
(ii) [respondent has] 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 [respondent] have engaged in a pattern of such conduct; or
(iii) [respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent's] 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 [respondent's] web site or location or of a product or service on [respondent's] web site or location.
The record strongly suggests that Respondent intentionally attempted to attract internet user to his website through the fame and goodwill of the SERTA mark. It is undisputed that Respondent was familiar with the SERTA mark. He was a former executive at one of Complainant's primary competitors4 and states that he was at one time authorized to use the SERTA mark. When Respondent chose to register a domain name incorporating the SERTA mark in its entirety, he knew or should have known that his website would receive internet traffic due to the use of the mark. His registration thus knowingly trades off the likelihood that consumers will mistakenly infer an affiliation between the Respondent's website and Complainant, diverting customers away from Complainant's own website as well as its actual affiliates. Respondent's actions have the potential to disrupt Complainant's business in a manner that Respondent must have anticipated.
Respondent's bad faith is further illustrated by the domain name's resolution to a PPC parking page with links to websites selling products competing with Complainant's. It is now well-established that the use of a parking page in this manner is strong evidence of bad faith. See, e.g., Bayerische Motoren Werke AG v. bmwrider llc,WIPO Case No. D2008-0610 (June 23, 2008); Roust Trading Ltd. v. AMG LLC,WIPO Case No. D2007-1857 (February 29, 2008); Express Scripts Inc. v. Windgather Investments Limited/Mr. Cartwright,WIPO Case No. D2007-0267 (April 26, 2007); Sports Saddle, Inc. v. Johnson Enters.,WIPO Case No. D2006-0705 (August 18, 2006). Not only does Respondent's registration divert internet users to his site based on the goodwill of the SERTA mark, but it also threatens to divert actual mattress sales away from Complainant.
Respondent appears to claim that he is not responsible for the content of the parking page, but this is no defense. As explained by the three-member panel in Express Scripts:
“The Respondent contends that the advertisements in this case were “generated by the parking company.” The implication is that the Respondent was not responsible for the content of these advertisements. This may well be correct but in the Panel's view this makes no difference. It would have been aware that the “parking company” website would generate advertisements of some sort and given the similarity of the Domain Name to the Complainant's name, it should have been of no surprise to the Respondent that links to [competing] websites would be generated”.
Respondent made the affirmative decision to register the domain name with a registrar who uses PPC parking pages, and thus know or should have known that the result would be the display of diversionary, competitive links. Respondent also, apparently, did not take any steps to instruct the registrar not to use a PPC parking page when he registered the domain name. He may not have made specific decisions regarding which links would appear, but he did make the specific decision to use this registrar and allow a third party to disrupt Complainant's business.
It is also no defense that Respondent may not himself currently derive any commercial gain from the sponsored links on the parking page. As past panels have noted, “the requirements of Paragraph 4(B)(iv) of the Policy do not require the owner of the domain name to be the entity that commercially gains from the diversion.” Roust (citing Express Scripts); see also Villeroy & Bosch AG v. Pingerna,WIPO Case No. D2007-1912 (February 18, 2008) (“Respondent cannot infringe the Complainant's rights with impunity on the basis that it is allowing a third party to reap the profits of it wrongful conduct”). Commercial gain inured to someone as a result of Respondent's intentional free-riding off Complainant's goodwill, and it was within Respondent's powers, as owner of the domain name, to have the parking page removed.
The Panel therefore finds that Complainant has met its burden under Paragraph 4(a)(iii) to establish the registration and use of the disputed domain name in bad faith. 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 name be transferred to the Complainant.
David H. Bernstein
Sole Panelist
Dated: November 20, 2008
1 The names of the North Carolina corporation and federal trademarks were redacted in the version of the Response sent to Complainant.
2 Although this contention is somewhat opaque, the Panel understands Respondent to be contending that, although he is in fact the registrant of the domain name , he is not responsible for the present contents of the website to which that domain name resolves.
3 If the redacted information might have ultimately altered the Panel's decision, it might have given Respondent the opportunity to submit the confidential material to the Panel and Complainant. However, the redacted information, even if considered by Panel, would not have altered its decision, rendering this option an unnecessary delay in resolving this dispute.
4 Complainant points to Respondent's employment with Sealy, Inc., one of Complainant's primary competitors, as demonstrating Respondent's intent to disrupt its business, but Respondent has provided credible evidence that his employment with Sealy terminated prior to the registration of the domain name. Although the Panel does not infer any particular intent to benefit Sealy, Inc. through registration of the domain name, Respondent's past employment is illustrative of his familiarity with the mattress industry, in which Complainant is a major player.
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