WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION National Bedding Company L.L.C. v. Back To Bed, Inc. Case No. D2010-0106 1. The Parties
The Complainant is National Bedding Company L.L.C. of Hoffman Estates, Illinois, United States of America, represented by Quarles & Brady LLP, United States of America.
The Respondent is Back To Bed, Inc. of Itasca, Illinois, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2010. On January 25, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On January 25, 2010, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on February 8, 2010. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 2, 2010.
The Center appointed William R. Towns as the sole panelist in this matter on March 10, 2010. 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 Complainant sells mattresses and mattress related products in the United States and elsewhere using the service mark AMERICA'S MATTRESS, including sales over the Internet on its website at “”. The Complainant, located in Hoffman Estates, Illinois, has obtained two registrations for its mark from the United States Patent and Trademark Office (USPTO). The first registration issued on February 22, 2005, based on the Complainant's application submitted on December 3, 2001. The record reflects the Complainant's use of the mark in commerce since 2001.
The Respondent operates a number of mattress stores in the Chicago, Illinois metropolitan area. The Respondent registered and is using the disputed domain name to redirect Internet users to its “Back to Bed” website (“”), on which the Respondent promotes its Chicago stores and offers various brands of mattresses for sale. The disputed domain name was first registered in 2004. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is merely a plural form of the AMERICA'S MATTRESS mark and therefore confusingly similar to the mark. The Complainant asserts its mark has become well-known as a result of the Complainant's extensive sales of AMERICA'S MATTRESS products in North America and elsewhere, and that the Complainant was using the mark long before the Respondent registered and began using the disputed domain name.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant maintains that the Respondent is not known by the disputed domain name, has not been authorized to use the Complainant's mark, and registered the disputed domain name in order to misleadingly divert consumers to the Respondent's website based on the confusing similarity of the disputed domain name to the Complainant's mark.
The Complainant further alleges that the Complainant and the Respondent are direct competitors whose headquarters are located within 15 miles of each other, and who have retail stores within walking distance of each other. In view of this, the Complainant contends that the Respondent obtained the disputed domain name with full knowledge of the Complainant's long prior use and ownership of the AMERICA'S MATTRESS mark.
In view of the foregoing, the Complainant maintains that the Respondent registered and is using the disputed domain name to divert consumers to the Respondent's website by intentionally creating a likelihood of confusion as to source, affiliation or sponsorship of the website, which constitutes bad faith under under paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant's AMERICA'S MATTRESS mark, in which the Complainant has established rights through registration and use. Regarding the question of identity, the inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. Under this standard, the disputed domain name, which is merely the plural form of the Complainant's mark, unquestionably is confusingly similar to the mark.
Accordingly, the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. It is undisputed that the Complainant has not authorized the Respondent to use the Complainant's mark, and there is no indication that the Respondent has been commonly known by the disputed domain name. Nevertheless, the record reflects that the Respondent, a direct competitor of the Complainant in the Chicago, Illinois area and on the Internet, has registered and is using a domain name confusingly similar to the registered mark of its competitor to redirect Internet visitors to the Respondent's website.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the 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.
The Respondent has not submitted a formal Response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009.1 In any event, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may in certain instances establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of any value corresponding to a trademark. See, e.g., Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964.
The Panel is not persuaded from the record of this case that the Respondent registered and has used the disputed domain name based on a good faith belief that the disputed domain name's value was attributable to its generic or descriptive characteristics. It can scarcely be gainsaid from the record that the Respondent was unaware of the Complainant's prior use of the AMERICA'S MATTRESS mark, given that the Complainant and the Respondent compete directly with each other in the Chicago, Illinois area and over the Internet.
To the contrary, the Panel concludes that the Respondent most likely registered the disputed domain name in order to trade on the initial interest confusion between the domain name and the Complainant's mark, intending to attract Internet users to the Respondent's website. This does not constitute use of the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E, Inc. v. Ult. Search, Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See, Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another” M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For reasons discussed under the preceding heading, and in the absence of any explanation from the Respondent, the Panel concludes from the facts and circumstances reflected in the record that the Respondent knew of and had in mind the Complainant's AMERICA'S MATTRESS mark when registering the disputed domain name. See Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The Panel further is of the view that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel concludes that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: March 24, 2010
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