Complainant is Serta, Inc. of Hoffman Estates, Illinois, United States of America (“U.S.”), represented by Quarles & Brady LLP, U.S.
Respondent is American Internet of Boston, Massachusetts, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with D LLC (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on September 19, 2012. On September 19, 21, and 26, 2012, the Center transmitted by email to the Registrar requests for registrar verification in connection with the disputed domain name. On September 27, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from that contained in the Complaint, as well as providing other details of the registration. The Center sent an email communication to Complainant on October 2, 2012 providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 2, 2012.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on October 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 24, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 30, 2012.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 14, 2012. 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 owns a United States federal trademark registration, along with registrations in other jurisdictions, for the mark ICOMFORT for mattresses, other bedding items, and retail store services. The earliest of these is the U.S. registration for mattresses; it issued in October 2007 and claimed a date of first use of December 20, 2006.
The disputed domain name was registered in May 2012. The domain name is currently used for a website that displays links to other sites and information related to mattresses. 5. Parties’ Contentions A. Complainant A.1. Identical or Confusingly Similar
Complainant owns the trademark ICOMFORT, which it has registered for mattresses, mattress foundations, mattress pads, pillows, furniture, bedding items and retail store services. It owns numerous registrations worldwide for the mark, including a U.S. federal registration that issued in 2007.
Complainant markets and sells products bearing the ICOMFORT mark throughout the world, including through its “” website, which redirects visitors to its “” website. Complainant’s ICOMFORT mark is recognized by consumers throughout the world as designating Complainant as the source of Complainant’s ICOMFORT products.
The disputed domain name, , consists of Complainant’s ICOMFORT mark along with the generic name of Complainant's goods. A.2. Rights or Legitimate Interests
Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant first registered the ICOMFORT mark in 2007, long before Respondent registered the disputed domain name. Complainant has not authorized Respondent to use its ICOMFORT mark.
There is no evidence that Respondent has used, or has made preparations to use, the domain name in connection with a bona fide offering of goods or services.
Respondent is not making a legitimate noncommercial or fair use of . Respondent has registered the domain name in order to misleadingly divert consumers by attracting them through the domain name and then collecting revenue by featuring ads with links. Many of these links use competitor’s names and direct consumers to websites selling products that compete with Complainant’s.
The domain name at issue, , is not Respondent’s name, nor can it be considered its business name or common trade name. There is no legitimate basis for Respondent’s registration of .
Upon information and belief, Respondent obtained the domain name registration with knowledge of Complainant's prior use and ownership of the ICOMFORT mark in connection with mattresses and related goods. A.3. Registered and Used in Bad Faith
The disputed domain name was registered and is being used in bad faith.
Respondent registered the domain name with the intent of creating a “parked page” with sponsored ads and links that take advantage of those Internet users who type the particular good or services they are seeking directly into a browser rather than using an Internet search engine.
Respondent’s use of the domain name constitutes bad faith under paragraph 4(b)(iv) of the Policy. Respondent uses to attract consumers for commercial gain by deceptively leading consumers to believe that Respondent is affiliated in some way with Complainant or that its website is sponsored, approved or endorsed by Complainant. The domain name is merely used to advertise sponsored links. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Procedural Matters
The Rules define a “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” See Rules, paragraph 1, s.v. “Respondent.” The Panel is of the view that a complaint is “initiated” when it is filed with the Center as described in the Rules, paragraph 3. This is consistent with the paragraph 3(a) of the Rules,1 which provides (emphasis added):
Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.
Therefore, in the Panel’s view, the original Complaint correctly named Moniker Privacy Service, an identity shield service, as Respondent. It was only after this proceeding was filed and commenced that the registrar identified “American Internet” as the registrant. Complainant thereafter amended its Complaint to substitute that entity as Respondent.
Notwithstanding the Panel’s conclusion that the Complaint as originally brought was proper, for purposes of this decision, the Panel treats only “American Internet” as Respondent. B. Substantive Matters
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not responded to Complainant’s arguments regarding confusing similarity or offered any of the types of evidence set forth in paragraph 4(c) of the Policy, such as using (or preparing to use) the domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith. B.1. Identical or Confusingly Similar
Complainant has established rights in the ICOMFORT mark by evidence of its trademark registrations.
The disputed domain name is not identical to Complainant’s mark. It consists of the mark combined with the generic term “mattress.” The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark, although such a finding is not automatic. Here, the addition of the word “mattress” after Complainant’s ICOMFORT mark (even absent the space between the two terms and the addition of the generic top-level domain “.com”, which are not relevant for these purposes), does nothing to differentiate or distinguish the domain name from Complainant’s mark, which remains the dominant portion of the domain name. To the contrary, the generic term seems to reinforce any connection to Complainant’s mattresses and bedding-related products.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights. B.2. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your 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) 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 or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
Complainant does not appear to be using the domain name in connection with a bona fide offering of any kind. As noted above, the disputed domain name is confusingly similar to Complainant’s mark. Visitors are presented with what appear to be links related to the products of Complainant and its competitors. Given Complainant’s prior use of the ICOMFORT mark, it is difficult to conceive of circumstances in which such an offering might be bona fide.
There is no reason to believe that Respondent, “American Internet,” is commonly known by the domain name. As discussed above, the domain name consists of the ICOMFORT mark and the term “mattress.” Nor does it appear that the domain name is being used in a noncommercial manner or in a way that would otherwise be a fair use.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the domain name. B.3. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in the ICOMFORT mark predate registration of the disputed domain name. The Panel finds it is most probable that Respondent was aware of Complainant’s ICOMFORT mattresses and products at the time the name was registered. Indeed, some of links currently displayed are to ICOMFORT products.
Under these circumstances, including adverse inferences drawn by Respondent’s failure to respond and its use of an identity shield, the Panel finds that Complainant has established that Respondent registered and is using the domain name in bad faith. 7. Decision
For 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 Complainant.
Debra J. Stanek
Sole Panelist
Dated: November 27, 2012
1 See also, Rules, paragraph 4, which is entitled “Notification” of Complaint and does not refer to “initiation.” Instead, paragraph 4(c) refers to the “commencement” of the proceedings.
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