The Complainant is Serta, Inc. of Hoffman Estates, Illinois, United States of America, represented by Quarles & Brady LLP, United States of America.
The Respondent is Domain Manager, WhoIs Privacy Management Service of Lewes, Delaware, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with EPAG Domainservices GmbH (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 18, 2013. On November 19, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 20, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 December 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was December 22, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of its default on December 24, 2013.
The Center appointed Dennis A. Foster as the sole panelist in this matter on January 7, 2014. 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, Serta, Inc. is a United States of America company that has marketed mattresses and related products in that country and throughout the world for several decades. The Complainant owns trademark mark registrations with the United States Patent and Trademark Office (“USPTO”) for both the marks SERTA (e.g., Registration No. 582,463; registered November 17, 1953) and PERFECT SLEEPER (e.g., Registration No. 581,897; registered November 3, 1953).
The disputed domain name, , is owned by the Respondent, who registered that name on March 16, 2004. The disputed domain name is connected to a website that hosts links to third party websites that offer products that compete directly with those marketed by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant owns several valid USPTO trademark registrations for both SERTA and PERFECT SLEEPER. Under those marks and brands, the Complainant has marketed and sold mattresses and mattress-related products in the United States and throughout the world for decades.
Due to extensive marketing, the Complainant’s SERTA and PERFECT SLEEPER trademarks have become recognized throughout the world, with the Complainant known as the source of products produced under those marks. Thanks to its ownership of domain names such as , the Complainant also maintains a notable Internet presence relative to its products and sales.
The disputed domain name ,contains both of the Complainant’s trademarks.
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has never been authorized to use the SERTA or PERFECT SLEEPER marks. There is no evidence to suggest that the Respondent is using, or has preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Moreover, the Respondent is not making a legitimate noncommercial or fair use of the name. Instead, the disputed domain name is being used by the Respondent for a website that seeks to divert Internet users to advertising links that offer products that compete with those offered by the Complainant. Finally, the disputed domain name is not the name of the Respondent.
The disputed domain name was registered and is being used in bad faith. The Respondent is using the disputed domain name to host a “parked page” with sponsored ads and links that lead to third party websites which market products that are in competition with the Complainant’s products. The Respondent receives commercial gain by providing such linkage and diversion. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Under paragraphs 4(a)(i) – (iii) of the Policy, the Panel may find in favor of the Complainant and order transfer of the disputed domain name, , provided that the Complainant can show that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By submission to the Panel of clear and convincing evidence (Annexes 3 and 4) that it possesses valid USPTO trademark registrations for the SERTA and PERFECT SLEEPER marks, the Complainant has demonstrated to the Panel that the Complainant has sufficient rights in those marks to satisfy the requirements of Policy paragraph 4(a)(i). See, The Schneider Group, Inc. v. Jack Mann,WIPO Case No. D2010-0448 (“The Panel finds that Complainant has established rights in the PROTEK mark under Policy paragraph 4(a)(i) through its registration with the USPTO.”); and Space Needle LLC v. Iqbal Lalji,WIPO Case No. D2008-1883 (“The Panel finds that Complainant has established rights in the mark SPACE NEEDLE, by virtue of its registration with the United States Patent and Trademark Office”).
The Panel observes that the disputed domain name, , is a combination of the Complainant’s marks, SERTA and PERFECT SLEEPER. While identical to neither mark, the disputed domain name is confusingly similar to both marks in the Panel’s view. The Panel notes that there have been numerous prior UDRP decisions where panels have found disputed domain names consisting solely of established-mark combinations to be confusingly similar to one or more of those marks. See, for example, F. Hoffmann-La Roche AG v. ITWEB Domain Protection,WIPO Case No. D2008-0847 (“…the Panel finds that the domain name is confusingly similar with the Complainant's trademarks ROCHE and VALIUM.”); Société des Produits Nestlé SA v. Stuart Cook,WIPO Case No. D2002-0118 (ruling , among other disputed domain names, to be confusingly similar to the complainant’s NESTLE and PURINA marks); and A.P. Møller v. Web Society,WIPO Case No. D2000-0135 (finding the disputed domain names, and , to be confusingly similar to the MAERSK and SEA-LAND marks owned by the complainant, while opining that “…it is clear that they are both confusingly similar since each incorporates the primary, distinctive elements of both of the relevant trademarks of the complainant.”).
As a result, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets forth three ways in which the Respondent might establish rights or legitimate interests in the disputed domain name:
(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 non-commercial 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.
As there is no apparent visual or phonetic correspondence between the disputed domain name, , and the Respondent’s name, Domain Manager WhoIs Privacy Management Service, the Panel concludes that the Respondent is not commonly known by the disputed domain name, rendering paragraph 4(c)(ii) inapplicable to this case. Moreover, without contradiction from the Respondent, the Complainant has contended, and provided ample evidence (Annex 7), that the disputed domain name is attached to a website that presents links to third party websites that offer mattress-related products that compete directly with those sold by the Complainant. In accordance with the consensus of previous Policy panels confronting similar circumstances, the Panel finds that such employment of the disputed domain name is consistent with neither “a bona fide offering of goods and services” per paragraph 4(c)(i) nor “a legitimate noncommercial or fair use” of the name per paragraph 4(c)(iii). See, VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager,WIPO Case No. D2010-0925 (“The use of distinctive trademark terms to direct Internet users to a pay-per-click link farm parking page that offers goods or services competing with the trademark owner is well established under the Policy not to constitute a bona fide offering of goods or services or to constitute fair use.”); and Dwight Esnard v. Navigation Catalyst Systems, Inc., NAF Claim No. 1230381 (“Respondent’s [disputed] domain name resolves to a website displaying links to third-party websites in competition with Complainant. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy [paragraph] 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy [paragraph] 4(c)(iii).”).
Therefore, as neither the Respondent nor the record provide the Panel with effective evidence that the Respondent has rights or legitimate interests in the disputed domain name, the Panel will base its decision on this issue upon the Complainant’s prima facie case that the Respondent lacks those rights or interests. That prima facie case results from the Complainant’s successful assertion that the disputed domain name is confusingly similar to the Complainant’s trademarks and the Complainant’s uncontested contention that it has never granted the Respondent authority to use those trademarks in any manner.
Accordingly, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel takes notice of the fact that a website owner commonly collects a small fee for every Internet user who “clicks” on a website icon/link that connects said user to the website of a third party that has goods and/or services to offer that user. As a result, the Panel believes that the Respondent likely obtains commercial gain from its use of the disputed domain name as described in the section above. Since the disputed domain name has been found to be confusingly similar to the Complainant’s marks, the Panel believes also that the Respondent intends to generate traffic to its website due to the likelihood that Internet users will be confused as to the source, sponsorship, affiliation, or endorsement of that website with respect to the Complainant and its trademarks. Therefore, the Panel concludes that the disputed domain name was registered and is being used by the Respondent in bad faith under the circumstance set forth in Policy paragraph 4(b)(iv). See, FMR Corp. v. Infomax Ltd., NAF Claim No. 464613 (“The Panel infers that Respondent receives click-through fees for diverting Internet users to competing financial services websites. Because Respondent’s domain name is confusingly similar to Complainant’s FIDELITY.COM mark, consumers accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the disputed domain name constitutes bad faith registration and use pursuant to Policy [paragraph] 4(b)(iv).”); and Caesars Entertainment, Inc. v. Infomax, Ltd.,WIPO Case No. D2005-0032 (“The Panel is satisfied that the Respondent is intentionally using the Domain Name to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s well-known mark, and that the Respondent gains commercially from such confusion by receiving ‘click-through’ commissions. This constitutes evidence of registration and use in bad faith in accordance with paragraph 4(b)(iv) of the Policy.”).
Consequently, the Panel finds that the Complainant has shown that the disputed domain name was registered and is being used 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 the Complainant.
Dennis A. Foster
Sole Panelist
Date: January 21, 2014
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