Sint, LLC and Sleepy's, LLC v. Broadway Interior Furniture Inc
Claim Number: FA0910001291286
Complainant is Sint, LLC and
Sleepy's, LLC (“Complainant”), represented by Laura
A. Chubb of Wiggin and Dana LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 26, 2009; the National Arbitration Forum received a hard copy of the Complaint October 27, 2009.
On October 26, 2009, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. verified that Respondent is bound by the Network Solutions, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 30, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 19, 2009, 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@sleepys-nyc.com, postmaster@sleepys-nyc.net, postmaster@sleepys-ny.com, postmaster@sleepys-ny.net, postmaster@sleepysny.com, postmaster@sleepysny.net, postmaster@sleepysnyc.com, and postmaster@sleepysnyc.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net>, are confusingly similar to Complainant’s SLEEPY’S mark.
2. Respondent has no rights to or legitimate interests in the <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net>, and <sleepysnyc.net> domain names.
3. Respondent registered and used the <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, consisting of Sint, LLC, and Sleepy’s, LLC, collectively, operates a mattress, furniture and bedding business. Complainant Sint, LLC, owns a registration for the SLEEPY’S mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,547,769 issued July 11, 1989) and Complainant Sleepy’s, LLC, is the exclusive licensee of the SLEEPY’S mark.
Respondent, Broadway Interior Furniture, Inc., registered the disputed domain names August 15, 2006. The disputed domain names each resolve to a website that sells products that compete with Complainant’s mattress, bedding and furniture business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 registered the SLEEPY’S mark with the USPTO (Reg. No. 1,547,769 issued July 11, 1989). The Panel finds that Complainant’s registration with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s disputed
domain names are confusingly similar to Complainant’s SLEEPY’S
mark. The disputed domain names each contain a combination of the
following alterations to the SLEEPY’S mark: (1) a hyphen has been added to the
mark; (2) the geographic abbreviations of New York “ny,” or New York City “nyc”
have been added to the mark; (3) the generic top-level domain (“gTLD”) “.com” or
“.net” has been added to the mark and (4) the apostrophe has been removed from
the mark. The Panel finds these alterations do nothing to distinguish the
disputed domain names from the mark and thus finds confusing similarity under
Policy ¶ 4(a)(i). See Health Devices Corp. v.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain names. The Panel finds that Complainant made a prima facie case under Policy ¶ 4(a)(ii). Respondent did not submit a Response in these proceedings; however the Panel will examine the evidence in light of Policy ¶ 4(c) before making a determination as to whether or not the evidence suggests that Respondent has rights or legitimate interests. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Complainant contends that Respondent is not commonly known by the disputed domain names. Respondent is listed in the WHOIS registrant information as “Broadway Interior Furniture.” Nothing in the record indicates that Respondent is commonly known by the SLEEPY’S mark, and Respondent has failed to proffer assertions or evidence indicating otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gestmusic Endemol, S.A. v. operaciontriunfo.us, FA 214337 (Nat. Arb. Forum Jan. 14, 2004) (“Though Respondent’s WHOIS information lists Respondent’s name as ‘o. operaciontriunfo.us’ and organization as ‘operaciontriunfo.us,’ there is no evidence before the Panel that Respondent was actually commonly known by the [<operaciontriunfo.us>] domain name.”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant contends
that Respondent is using the disputed domain names to sell products, such as
mattresses, in direct competition with Complainant. The Panel finds that using the disputed
domain names containing Complainant’s SLEEPY’S mark to compete with Complainant
is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶
4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services.”); see
also Or. State Bar v. A Special Day,
Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's
advertising of legal services and sale of law-related books under Complainant's
name is not a bona fide offering of goods and services because Respondent is
using a mark confusingly similar to the Complainant's to sell competing
goods.”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is using the disputed
domain names to sell products that directly compete with Complainant’s
mattress, furniture and bedding business.
The Panel finds that Respondent’s competitive use of the disputed
domain names indicates that Respondent registered and is using the disputed
domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See
Spark Networks PLC v. Houlihan, FA 653476
(Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of
a domain name substantially similar to the complainant’s AMERICAN SINGLES mark
in order to operate a competing online dating website supported a finding that
respondent registered and used the domain name to disrupt the complainant’s
business under Policy ¶ 4(b)(iii)); see
also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb.
Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the
same business as the Complainant. The parties can therefore be considered as
competitors. The Panel thus finds that the Respondent registered the domain
name primarily for the purpose of disrupting the business of a competitor,
which constitutes evidence of registration and use in bad faith under Policy
4(b)(iii).”).
Complainant contends Respondent is gaining commercially from the sale of competing products on the confusingly similar disputed domain names. The Panel agrees and finds that Respondent’s commercial gain from its use of the confusingly similar disputed domain names is an attempt to profit from the good will Complainant has developed in its mark and is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sleepys-nyc.com>, <sleepys-nyc.net>, <sleepys-ny.com>, <sleepys-ny.net>, <sleepysny.com>, <sleepysny.net>, <sleepysnyc.com>, and <sleepysnyc.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 9, 2009.
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