Tempur World LLC and Tempur-Pedic International Inc. and Dan-Foam Aps v. Michael Foster
Claim Number: FA0807001215118
Complainant is Tempur World LLC and Tempur-Pedic International Inc.
and Dan-Foam Aps (“Complainant”), represented by Ariana
G. Voigt, of Michael Best & Friedrich LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <tempurpedicbedroom.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2008.
On July 14, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <tempurpedicbedroom.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July
24, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 13, 2008
by which Respondent could file a response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@tempurpedicbedroom.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 20, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tempurpedicbedroom.com> domain name is confusingly similar to Complainant’s TEMPUR-PEDIC mark.
2. Respondent does not have any rights or legitimate interests in the <tempurpedicbedroom.com> domain name.
3. Respondent registered and used the <tempurpedicbedroom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants Tempur World LLC,
Tempur-Pedic International Inc., and Dan-Foam Aps will be collectively referred
to as Complainant. Complainant develops,
manufactures, and markets visco-elastic foam mattresses, cushions, pillows, and
other accessories under the TEMPUR-PEDIC mark (Reg. No. 1,853,088 issued September
6, 1994), and other variations thereof.
All of Complainant’s marks have been registered with the United States
Patent and Trademark Office (“USPTO”).
Complainant began using the mark in 1992, and has achieved widespread
and continous use of the mark in its operations. Complainant owns several domain names,
including the <tempur-pedic.com>, <tempurpedic.com> and
<tempurworld.com> domain names, all of which resolve to the company’s
main website.
Respondent registered the <tempurpedicbedroom.com> domain name on April 29, 2008, and is using the disputed domain name to resolve to a website that hosts sponsored links to third-parties, some of which operate in direct competition with Complainant.
Respondent has offered to sell the disputed domain name both to Complainant and the general public. On the resolving website to the disputed domain name, there exists the following: “If you’re interested in purchasing this domain or website please contact us at automatedwealth@gmail.com.” Moreover, in an e-mail exchange initiated by Complainant between the parties on July 10, 2008, Respondent offered to sell the disputed domain name to Complainant, and indicated a willingness to sell the disputed domain name to Complainant’s competitor if Complainant did not purchase the disputed domain name.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has provided evidence of its registration of the
TEMPUR-PEDIC mark with the USPTO. The
Panel finds that this evidence adequately confers upon Complainant sufficient
rights in the mark for the purposes of UDRP standing pursuant to Policy ¶
4(a)(i). See Morgan Stanley v.
Fitz-James (CT2341-RSC) Cititrust Group Ltd., FA 571918 (Nat. Arb.
Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence
that Complainant has registered its mark with national trademark
authorities. The Panel has determined
that such registrations present a prima
facie case of Complainant’s rights in the mark for purposes of Policy ¶
4(a)(i).”); see also
Respondent’s <tempurpedicbedroom.com>
domain name contains Complainant’s entire TEMPUR-PEDIC mark while omitting the
hyphen, and adding both the generic word “bedroom,” and the generic top-level
domain (“gTLD”) “.com.” The Panel finds
that neither the removal of the hyphen nor the addition of a gTLD maintain any
relevancy under a Policy ¶ 4(a)(i) analysis.
See Trip Network Inc. v. Alviera,
FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the addition of a
gTLD, whether it be “.com,” “.net,” “.biz,” or “.org,” is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Nat’l
Cable Satellite Corp. v. Black Sun Surf Co., FA 94738 (Nat. Arb. Forum June 19, 2000) (holding that the domain name
<cspan.net>, which omitted the hyphen from the trademark spelling,
C-SPAN, is confusingly similar to the complainant's mark). Moreover, the word “bedroom” could be fairly declared
descriptive of Complainant’s business, as Complainant produces bedding items
such as mattresses, cushions, pillows, etc.
When a generic word that describes the complainant’s business is added
to the disputed domain name, panels are consistent in holding that confusing
similarity is not diminished. See Miller Brewing
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Based on the record, Complainant has met its
burden of demonstrating a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
name. Therefore, the burden shifts to
Respondent to demonstrate its rights or legitimate interests. See Document Techs., Inc. v. Int’l Elec. Commc’ns
Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of
the Policy requires that the Complainant prove the presence of this element
(along with the other two), once a Complainant makes out a prima facie
showing, the burden of production on this factor shifts to the Respondent to
rebut the showing by providing concrete evidence that it has rights to or
legitimate interests in the Domain Name.”); see
also Swedish Match UK Ltd. v. Admin,
Domain, FA 873137
(Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case
has been established by the complainant under Policy ¶ 4(c), the burden then
shifts to the respondent to demonstrate its rights or legitimate interests in
the disputed domain name).
There is no
evidence within the record to suggest that Respondent is commonly known by the
disputed domain name. The WHOIS
information lists Respondent as “Michael Foster,” and Complainant does not
allege any right or permission on behalf of Respondent to use Complainant’s
mark in any fashion. The Panel therefore
finds that Respondent is not commonly known by the disputed domain name under
Policy ¶ 4(c)(ii). See M. Shanken
Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum
Aug. 3, 2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record); see also
Respondent’s disputed domain name resolves to a website that features sponsored links for third-parties, including Complainant’s direct competitors. Respondent presumably receives referral fees for this advertisement placing. The Panel therefore finds that Respondent has failed to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent has offered to sell the disputed domain name to
both Complainant and the general public.
While it may not be an example per
se of a lack of rights and legitimate interests merely to offer the disputed
domain name to the public or to Complainant when Complainant initiates the conversation,
the Panel takes significant note of the fact that Respondent attempted to
persuade Complainant to purchase the domain name by indicating a willingness to
sell the domain to Complainant’s competitor.
The Panel also notes that Respondent has failed to tender a response in
this matter, which therefore fails to provide any contradiction to
Complainant’s assertions or the Panel’s inferences. Taken as a whole, the Panel finds that
Respondent has evidenced its lack of rights and legitimate interests by
offering to sell the disputed domain name under Policy ¶ 4(a)(ii). See Mothers Against Drunk Driving v. Hyun-Jun
Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under
the circumstances, the respondent’s apparent willingness to dispose of its
rights in the disputed domain name suggested that it lacked rights or
legitimate interests in the domain name); see
also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat.
Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the
respondent registered the domain name with the intention of selling its
rights); see also Wal-Mart Stores, Inc.
v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct
purporting to sell the domain name suggests it has no legitimate use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s dual offers to sell the disputed
domain name constitute evidence of Respondent’s bad faith registration and use
under Policy ¶ 4(b)(i), as it appears that Respondent ultimately intended for
the sale of the disputed domain name both in its registration and use. See
Respondent’s disputed domain name resolves to a website that hosts sponsored links for Complainant’s direct competitors. The Panel finds that this practice likely disrupts Complainant’s business for Respondent’s commercial gain, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel also finds that Respondent has created a
likelihood of confusion for commercial gain as to Complainant’s endorsement and
sponsorship of the disputed domain name and corresponding website. The Panel finds that this constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma,
Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of
a confusingly similar domain name to display links to various third-party
websites demonstrated bad faith registration and use pursuant to Policy ¶
4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tempurpedicbedroom.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: September 3, 2008
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