Sleep Bamboo, Inc. v. Onedin Sportswear
Claim Number: FA1106001392777
Complainant is Sleep Bamboo, Inc. (“Complainant”), represented by Brett E. Lewis, New York, USA. Respondent is Onedin Sportswear (“Respondent”), represented by Ari Goldberger of Esqwire.com, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sleepcomfortbamboo.com>, registered with GoDaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 9, 2011.
On June 9, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <sleepcomfortbamboo.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 10, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 30, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sleepcomfortbamboo.com. Also on June 10, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on July 1, 2011.
On July 6, 2011, the dispute resolution provider received Complainant’s timely Additional Submission.
On July 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M DeCicco as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the owner of all common law rights in the SLEEP BAMBOO™ trademark. Complainant first used the SLEEP BAMBOO Mark in commerce in January 2008 and has used it continuously and extensively in connection with the sale of bamboo products ever since. The SLEEP BAMBOO Mark has become well known to consumers in the United States and Canada as the source of revolutionary, eco-friendly high quality bed sheets.
Complainant has promoted its products extensively, spending tens of thousands of dollars on both online advertising and handing out nearly 10,000 free samples in the past three years. Sleep Bamboo’s products have been the subject of a number of online reviews. The <sleepbamboo.com> website has had over 180,000 unique visitors, and Sleep Bamboo has had over 17,000 followers on Twitter. Complainant has sold over $600,000 worth of bamboo products through thousands of separate orders under the SLEEP BAMBOO Mark. SLEEP BAMBOO is an inherently distinctive, suggestive mark with respect to Complainant’s products. While the products are manufactured from bamboo, they do not contain “sleep”; the term does not actually describe any constituent piece of the products.
Beyond the suggestive nature of the SLEEP BAMBOO Mark, Complainant’s advertising, online coverage, and continuous and exclusive use of the Mark over a period of nearly three and a half years has established secondary meaning in the minds of consumers, such that a person encountering websites, advertisements and other materials selling “SLEEP BAMBOO” or other similar bed sheets, is likely to believe that the source or sponsor of those websites or advertisements is Complainant, or that they are affiliated with Complainant.
Respondent Onedin Sportswear of Canada, Inc. and its principal, who knew of the SLEEP BAMBOO Mark through their relationship with Complainant’s supplier and registered the Domain Name to exploit the secondary meaning built up in that Mark, should be estopped from claiming that the SLEEP BAMBOO Mark lacks secondary meaning.
Complainant has used the SLEEP BAMBOO Mark continuously and exclusively in connection with the sale of bamboo products since January 2008, including on the Internet through its website, located at <www.sleepbamboo.com>. Complainant originally sourced its product from non-party @Source, an importer of bamboo textiles from China. During the course of their relationship, Complainant was often asked for details regarding his sales activities and business strategies; and frequently spent hours discussing them. A representative of the non-party supplier has repeatedly mentioned Respondent in conversations with Complainant, and on multiple occasions discussed business opportunities that he thought Respondent and Complainant might pursue together, including the possibility that Respondent might be interested in getting involved in Complainant’s bamboo sheet business.
In or around June 2010, Respondent acquired and started using the at-issue domain name in connection with a commercial website that offers competing bamboo bed sheets for sale to the public under the name “Sleep Comfort Bamboo.” This use is in direct competition with Complainant and infringes on Complainant’s SLEEP BAMBOO™ Mark. At the time Respondent acquired the at-issue domain name, Complainant’s use of the SLEEP BAMBOO™ Mark had already achieved widespread recognition throughout the United States and Canada.
Respondent had actual notice of Sleep Bamboo’s rights in the SLEEP BAMBOO™ Mark. As such, Respondent’s registration of a domain name confusingly similar to the SLEEP BAMBOO™ Mark for use in the sale of identical Competitive Goods could not have been made without awareness of Complainant’s rights. Complainant demanded that Respondent cease and desist its use of the infringing mark and Domain Name. Respondent refused to stop.
The disputed Domain Name incorporates both elements of Complainant’s SLEEP BAMBOO™ Mark. The only difference between the SLEEP BAMBOO™ Mark and <sleepcomfortbamboo.com> is the insertion of the generic term “comfort.” However, “comfort” is an essential descriptive term when discussing or marketing bamboo bed sheets; it appears on 47 different pages of Complainant’s own website. The addition of a generic term that describes Complainant’s product simply “does not create a distinct mark capable of overcoming a claim of confusing similarity.”
Complainant has not licensed, transferred, assigned or otherwise authorized Respondent to use the SLEEP BAMBOO™ Mark, or any variations thereof, as domain names on the Internet.
Respondent is not commonly known by the Domain Name. Respondent’s website and Respondent’s own letter to Complainant, show Respondent is known as Onedin Sportswear of Canada, Inc.
Respondent has made no use of, or demonstrable preparations to use, the at-issue domain name in connection with a bona fide offering of goods or services. Respondent has used the domain name to divert traffic and customers to a business that directly competes with Complainant’s.
Respondent registered the Domain Name over 2 years after Complainant began using the SLEEP BAMBOO™ Mark in commerce and had established its site as a provider of bamboo bed sheets. Respondent did not decide to offer similar products under a confusingly similar mark until after its association with Complainant’s former supplier provided Respondent with full awareness of Complainant’s use of and goodwill in the SLEEP BAMBOO™ Mark and is evidence of Respondent’s lack of legitimate interests in the Domain Name.
Respondent’s purposeful selection of a primary domain name that is confusingly similar to Complainant’s SLEEP BAMBOO™ Mark, for use in the sale of Competitive Goods, is also not a legitimate use under the Policy.
Respondent’s use of the virtually identical domain name to promote the sale of Competitive Goods in a manner likely to confuse consumers into believing that Respondent’s business is sponsored by or affiliated with Complainant is the type of willful harmful action that has been consistently found to constitute bad faith use of a domain name under paragraph 4(b)(iii) of the Policy.
Respondent uses the domain name to market competitive goods. Of all of the names that Respondent could have chosen, it seems implausible that its choice of <sleepcomfortbamboo.com>, which subsumes Complainant’s entire mark, was anything but deliberate. Respondent chose a confusingly similar name to cash in on Complainant’s good name and good will, which is the very essence of bad faith.
B. Respondent
Respondent contends as follows:
Respondent has been selling bamboo fabric items since 2006, over two years before Complainant started its online business. Respondent conceived of the idea to develop a web based business to sell bamboo bedding during a trade show in October, 2006, in Guangzhou, China. On October 20, 2006, Respondent and the fabric supplier collaborated during a lunch meeting and developed a list of names, including SLEEP COMFORT BAMBOO, which they thought would be excellent choices for a future brand to sell bamboo bedding products.
Respondent has a legitimate interest in the disputed domain name because it incorporates the necessary descriptive terms “sleep” and “bamboo” to describe the attributes of the products Respondent sells – bamboo sheets and bedding. For consumers looking for “bamboo bedding,” the word “bamboo” must be included in the product name – it is no different than incorporating the word “cotton” to describe and identify cotton sheets. Moreover, in the bedding industry, the use of the word “sleep” to describe and identify bedding products is highly common. Respondent choose to name and identify its products by the highly descriptive terms SLEEP COMFORT BAMBOO, to convey to consumers that its products are made from comfortable bamboo fabric, and that induce or are suitable for sleeping. Complainant’s SLEEP BAMBOO mark does not provide Complainant with exclusive rights to the two words “sleep” and “bamboo.” Absent a registered trademark and proof of secondary meaning associated with its alleged common law mark for a highly descriptive term, Complainant has no enforceable rights under the Policy. In any event, the disputed domain and Complainant’s alleged trademark are significantly different which precludes a finding of confusingly similarity.
There is no evidence that Respondent has engaged in bad faith registration. Not only did Respondent conceive of the name SLEEP COMFORT BAMBOO on October 20, 2006, two years prior to Complainant’s entry into the market, it also met with the bamboo fabric bedding supplier during the October 2006 trade show in China.
Respondent is using the disputed domain name in connection with an active website that supports a business operation selling bamboo sheets and bedding online –a bona fide use of a domain name in connection with the promotion of goods and services. Respondent has acted in good faith at all times and selected a highly descriptive name (back in 2006) for the same reasons that many other sellers choose descriptive brand names – to identify and describe their products to the consumer, and not to confuse. This does not violate the Policy.
Complainant does not have exclusive rights to a term composed of two descriptive words. Indeed, Complainant does not have a registered trademark for the alleged mark SLEEP BAMBOO; it has only alleged common law use of a descriptive trademark. Complainant has not provided evidence of acquired secondary meaning in the marketplace and therefore it does not have enforceable rights under the Policy. At best, Complainant holds a weak descriptive common law trademark for the term SLEEP BAMBOO.
Complainant relies on alleged common law rights. Complainant cannot have an exclusive common law trademark right to block use of the very terms that refer to the essential characteristics of the products. Absent proof of secondary meaning, a Complainant cannot establish common law trademark rights in purely common descriptive terms. It is settled law that the less distinctive a mark the greater the scrutiny required to sustain a complainant's assertion of common law trademark rights.
Sleep Bamboo contains highly descriptive terms that are not distinctive, but rather essential descriptions of the products being sold, namely bamboo fabric bedding products designed for a better sleep. Complainant cannot and does not have a monopoly on the word “bamboo” in connection with the sale of bamboo fabric products, and it does not have an exclusive right to use the word “sleep” in connection with products to help improve the quality of sleep, namely high quality bedding products. To demonstrate common law trademark rights to common words and their equivalents, secondary meaning must be established. The only “evidence” of alleged secondary meaning are mere declarations by Complainant and allegations that its mark has somehow acquired secondary meaning because its website has 180,000 unique visitors, has Twitter followers, and sold “thousands of separate orders” under the mark. These allegations are insufficient to prove secondary meaning. Moreover, had Complainant truly believed that its descriptive mark acquired secondary meaning it would have likely filed for a United States trademark which it has not done. Therefore, Complainant has not established enforceable trademark rights under the Policy and its claim must fail.
The addition of another word “Comfort” in between the two words “sleep” and “bamboo” is clearly distinct from Complainant’s alleged mark. The level of protection afforded Complainant’s mark is relatively low on the trademark spectrum.
Respondent’s rights and legitimate interest in the disputed domain name are established because Respondent registered the name based on its descriptive meaning and not to target a trademark. Use of a domain name in connection with bona fide offering of goods and services establishes Respondent’s legitimate interest.
Respondent’s descriptive domain <www.sleepcomfortbamboo.com> provides users of the web site the opportunity to purchase “soft, silky and remarkably comfortable bamboo bed linens, bamboo towels and bamboo bath robes.” Such use of the Disputed Domain name in connection with a business selling “Bamboo Bedding” is a legitimate use under the Policy. Complainant is plainly wrong that such use is illegitimate under the facts presented.
The disputed domain name incorporates a highly descriptive term to identify its comfortable Bamboo Bedding products. Complainant was not advertising or holding itself out as “Sleep Bamboo” back on October 20, 2006 when Respondent and its Bamboo fabric supplier conceived of the disputed domain and business idea. Absent direct proof that a descriptive term domain name was registered solely for the purpose of profiting from Complainant’s trademark rights, there can be no finding of bad faith registration and use. There is no such proof here. Complainant has proffered no evidence demonstrating that Respondent targeted its trademark and all the evidence demonstrates that there was no such targeting; in particular because Respondent created the name before Complaint existed.
Complainant has failed to meet its burden of proving bad faith registration and use and, the Complaint must, therefore, be dismissed.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Respondent does not dispute two key assertions going to the heart of Complainant’s claim of bad faith registration and use: 1) that Respondent was aware of Complainant and Complainant’s competing SLEEP BAMBOO™ mark at the time it registered the domain name; and 2) that Respondent registered the domain name for use in direct competition with Complainant.
Respondent’s argument against Complaint having common law rights boils down to a conclusory assertion that the individual words comprising Complainant’s trademark cannot be protected as trademarks. The issue, however, is not whether words, such as “sleep,” “comfort,” or “bamboo” are protectable, individually, as trademarks with respect to the sale of bamboo bedding products. The anti-dissection rule requires that this Panel consider whether Complainant possesses rights in the totality of the mark—“SLEEP BAMBOO™”—when used in connection with the sale of bamboo bedding products. The Response also misrepresents Complainant’s showing of common law trademark rights. Nor is Respondent’s claim of widespread use of “sleep” marks availing. Respondent has failed to produce evidence of a single trademark, other than Complainant’s, which makes use of the word “sleep” in connection with the sale of bamboo bedding, much less “sleep” and “bamboo.” Accordingly, even if Complainant’s rights to the SLEEP BAMBOO mark were limited, those rights would, at a minimum, protect against the knowing, wholesale adoption, by a competitor, of the entirety of Complainant’s mark to sell the exact, same goods. Adding the word “comfort” to Respondent’s mark, a word which describes a characteristic of the sheets that Complainant sells, does nothing to diminish confusion amongst consumers or search engines. Respondent is knowingly generating and capitalizing on confusion with Complainant’s mark.
Respondent claims that it could not have registered the domain name in bad faith in June 2010, because an associate came up with the term “Sleep Comfort Bamboo” during a lunch in 2006. The list has no bearing on Respondent’s intent at the time that it registered the domain name. By June 2010, Complainant had become one of the largest online retailers of bamboo bedding. Respondent was aware of Complainant’s trademark and business. It defies credulity for Respondent to suggest that it chose to register a domain name that wholly incorporated Complainant’s trademark purely by happenstance. Respondent could have picked any of the other names on its list, most of which bore no resemblance to Complainant’s trademark – or any one of an infinite number of other names. Respondent’s scribbling on the back of a napkin does not insulate it from later manifesting a bad faith intent to cash-in on Complainant’s goodwill by adopting a nearly identical domain name, as happened here.
Complainant demonstrates that it had common law trademark rights in SLEEP BAMBOO at the time the at-issue domain name was registered.
The trademark SLEEP BAMBOO is suggestive.
Respondent was aware of Complainant and the SLEEP BAMBOO mark prior to registering the domain name.
Respondent registered the at-issue domain name because of its similarity to the Complainant’s mark.
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."
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 rights in a mark which is confusingly similar to the at-issue domain name.
Although SLEEP BAMBOO is not registered, Complainant nevertheless demonstrates that it has common law rights in such mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant provides evidence of its common law rights in the SLEEP BAMBOO mark through its continuous and extensive use in commerce since January 2008 in connection with the sale of bamboo products. Complainant also proffers additional evidence of the type generally accepted to demonstrate that the mark has aquired secondary meaning.
In determining whether or not a descriptive mark has acquired secondary meaning, Courts (and Panels) will often consider the following factors: (1) the amount and manner of advertising; (2) the volume of sales; (3) the length and manner of the term's use; (4) results of consumer surveys. See Zatarain’s Inc. v Oak Grove Smokehouse, Inc, 698 F. 2d 786 (5th Cir 1983). See also, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") §1.7 (http://www.wipo.int/amc/en/domains/search/overview2.0/#17 , June 22, 2011) (presenting in digest form the consensus response to “What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?”)
Here, Complainant asserts that its mark has become well-known in the United States and Canada as a source of eco-friendly, high-quality bed sheets. Complainant states that it has spent tens of thousands of dollars in online advertising and distribution of free samples, which has resulted in sales of over $600,000 worth of bamboo products under the SLEEP BAMBOO mark. Complainant further shows that it has an extensive online presence as its <sleepbamboo.com> website has had over 180,000 unique visitors and its Twitter account has over 17,000 followers. Complainant backs up its assertions by appendixing corroborating documentation to the Complaint. Thereby, Complainant has provided sufficient evidence of its SLEEP BAMBOO having acquired secondary meaning and establishes common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
Respondent’s <sleepcomfortbamboo.com> domain name is confusingly similar to Complainant’s SLEEP BAMBOO mark. The domain name incorporates Complainant’s SLEEP BAMBOO mark entirely and merely alters it by inserting the descriptive word “comfort,” deleting the space between the words of the mark, and adding the generic top-level domain (“gTLD”) “.com.” Deleting spaces and affixing a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). Incorporating a descriptive word, (here comfort), may actually increase the likelihood of confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark).
Although Respondent contends that its <sleepcomfortbamboo.com> domain name is comprised of a common and descriptive term and as such cannot be found to be confusingly similar to Complainant’s mark, a determination on this issue is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is confusingly similar to Complainant’s mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); Nevertheless the at-issue mark is not descriptive but rather suggestive and as mentioned above, has acquired secondary meaning.
Therefore the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s SLEEP BAMBOO mark according to Policy ¶ 4(a)(i).
Complainant shows that Respondent lacks rights and interests in respect of the domain name.
Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <sleepcomfortbamboo.com> domain name. WHOIS information identifies Respondent as the registrant, a name dissimilar to the domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Furthermore, Complainant has not licensed, transferred, assigned or otherwise authorized Respondent to use the SLEEP BAMBOO mark, or any variations thereof, as domain names on the Internet. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, Complainant satisfies its slight initial burden regarding Respondent’s lack of rights and interests in the disputed domain name.
Respondent fails to controvert Complainant’s showing that Respondent lacks rights and interests in respect of the domain name. Respondent’s use of the disputed domain name to operate a competing business is 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). 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.”). Nor is the domain name “common” or “descriptive.” Furthermore, the fact that the Respondent may have conceived of the domain name prior to Complainant’s trademark rights coming to fruition does not, without more, give Respondent rights in the mark or otherwise diminish Complainant’s established trademark rights.
The Panel thus concludes that Respondent lacks rights and interests in respect of the domain name.
Complainant demonstrates that the at-issue domain name was registered and used in bad-faith.
The record indicates that it is more likely than not that <sleepcomfortbamboo.com> was primarily registered for its similarity to Complainant’s mark rather than for other reasons. Respondent operates within the same industry as Complainant. Respondent received its products from the same supplier as Complainant and the parties were aware of each other well prior to the registration of the domain name. They together engaged in exchanges concerning proposed business plans with their common supplier. Knowledge of a competitor Complainant’s mark is indicative of bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights).
Respondent contents that it picked the at-issue domain name from a previously conceived list of names. Of the 12 items on the 2006 napkin list which Respondent asserts memorializes the original suggestion for the at-issue domain name, only 5 contain both SLEEP and BAMBOO, thereby inferring that thoose two terms motivated the registration of the at-issue domain name. In its papers, Respondent characterizes the entries on the napkin list as “brand names” notwithstanding that Respondent also characterizes both the at-issue domain name and Complainant’s mark as descriptive. Based on the foregoing, the Panel rejects Respondent’s proposition that the at-issue domain name is wholly descriptive and agrees with Complainant that 2006 napkin list’s foreshadowing of the domain name does not tend to prove that the 2010 domain name registration and subsequent use thereof were made in good faith.
Internet users led to Respondent’s website due to its confusingly similar domain name may purchase goods from Respondent rather than Complainant. Such registration and use disrupts Complainant’s business and is evidence of bad faith under Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent …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).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Respondent’s <sleepcomfortbamboo.com> domain name creates a likelihood of confusion among Internet users as to Complainant’s SLEEP BAMBOO mark and Complainant’s sponsorship of, or affiliation with, the disputed domain name and its referred website. Respondent appears to take advantage of this confusion in order to “cash in on Complainant’s good name and good will” since there is no other explanation for choosing a domain name so similar to Complainant’s. Respondent’s registration and use of the disputed domain name thus constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
For all the above-mentioned reasons the Panel concludes that the at-issue domain name was registered and used in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sleepcomfortbamboo.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 20, 2011
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