Elevation Bed, LLC. v. Contour Adjustable Beds
Claim Number: FA1203001433213
Complainant is Elevation Bed, LLC. (“Complainant”), represented by Steven L. Alves, Florida, USA. Respondent is Contour Adjustable Beds (“Respondent”), represented by Mary L. Grieco of Olshan Grundman Frome Rosenzweig & Wolosky LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <contourbeds.com>, <contourbeds.net>, <contourbed.com>, <contourbed.net>, <contouradjustablebeds.com>, <contouradjustablebeds.net>, <contouradjustablebed.com>, and <contouradjustablebed.net>, registered with Godaddy.com, LLC.
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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2012; the National Arbitration Forum received payment on March 6, 2012.
On March 8, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <contourbeds.com>, <contourbeds.net>, <contourbed.com>, <contourbed.net>, <contouradjustablebeds.com>, <contouradjustablebeds.net>, <contouradjustablebed.com>, and <contouradjustablebed.net> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 March 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2012 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@contourbeds.com, postmaster@contourbeds.net, postmaster@contourbed.com, postmaster@contourbed.net, postmaster@contouradjustablebeds.com, postmaster@contouradjustablebeds.net, postmaster@contouradjustablebed.com, and postmaster@contouradjustablebed.net. Also on March 14, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 April 3, 2012.
Complainant submitted an Additional Submission that was received on April 9, 2012 and deemed to be in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission that was received on April 13, 2012 and deemed to be in compliance with Supplemental Rule 7.
On April 17, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr.Maninder Singh 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant in the Complaint claims that :
· Complainant, Elevation Bed, LLC, is the owner of the CONTOUR mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,184,796 registered January 5, 1982).
· Complainant is in the business of licensing the CONTOUR brand name on adjustable beds and bedding.
· Complainant has used the CONTOUR mark on its products since at least 1978.
· Respondent should be considered as having no rights or legitimate interests in the domain names.
· Respondent registered the domain name for a competitor of Complainant who was previously licensed to use the trademark.
· The main purpose of the resolving website is to market adjustable beds in direct competition to Complainant’s licensee.
· By using the domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or comments.
B. Respondent
Respondent in his response alleges that :
· Respondent does not dispute that the domain names at issue contain the trademark in which the Complainant alleges to have rights.
· Respondent and/or its affiliates were licensed to use the trademarks and the domain names at issue and should be considered as having rights and legitimate interests in the domain names.
· Contour Adjustable Beds is not a legal entity; but is a trade name that was used by M&M Bedding, LLC (“M&M”).
· The Complainant, Elevation Bed, LLC (“Complainant”) and AJM Enterprises (a former business entity that was related to Respondent) entered into a Dealer License Agreement on June 28, 2007, wherein Complainant granted AJM a non-exclusive license to use the CONTOUR trademarks, among others, in connection with the marketing, promotion and sale of residential use electronic adjustable beds, and mattresses to be used in connection therewith. Pursuant to the Dealer Agreement, internet orders were allowed.
· The matter at hand is a business dispute between a former licensor and licensee and is not properly before this forum, as the domain names at issue were neither acquired nor used in bad faith.
· Complainant ended its licensee relationship on February 27, 2012, but prior payments made to Complainant envisaged that their relationship would last until June 30, 2012.
· The Complaint should be denied in its entirety based upon this relationship, as Respondent was given a license to use and market goods under the CONTOUR mark.
· The domain names should not be considered as having been registered and used in bad faith.
· Four of the domain names were not even registered by Respondent, but were registered by Complainant and control of the domain names was subsequently transferred to Respondent.
· The remaining four domain names were registered by an entity known as AJM (a predecessor of Respondent) in furtherance of the licensing agreement. These other domain names were only used by Respondent during the term of the license agreement for various internet marketing campaigns.
· Respondent contends that where a complainant cannot prove that the domain name has both been registered and is being used in bad faith, the Complainant’s request for transfer would be denied. The Respondent, in this regard, has placed reliance upon the following decisions:
(i) Green Tyre Co. Plc v. Shannon Group, D2005-0877 (WIPO Oct. 5, 2005) holding that - where the Complainant gave explicit permission for the registration of the domain name by the Respondent, the Panel found that the Respondent did not have the requisite bad faith when it registered the domain name, and the circumstances complained of by the Complainant were of a later date than the registration of the domain name, could not lead to the conclusion that the original registration in good faith, in retrospect, would become a registration in bad faith;
(ii) Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000);
(iii) Georgia-Pacific Consumer Prods. v. Gallo, D2010-2062 (WIPO March 1, 2011) (complaint denied where there was registration in good faith even though the domain was later used in bad faith);
(iv) Mile, Inc. v. Burg, D2010-2011 (WIPO July 2, 2011) (complaint denied where Complainant had not met its burden of establishing the probability that the Respondent registered the Domain Name in a bad faith effort to exploit the Complainant’s mark).
(v) The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) - In this case, the Panel noted that “Respondent was happily employed at the time he registered the Domain Name, and he registered the Domain Name with the full consent and knowledge of the Complainant … [t]hus, [Respondent] did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy.”.
(vi) Green Tyre Co. Plc v. Shannon Group, D2005-0877 (WIPO Oct. 5, 2005) - In this case, the Respondent was a licensee of Complainant, and the Complainant allowed the Respondent to register the Domain Name in order to promote the Complainant’s products under condition that the Respondent would relinquish its ownership of the Domain Name upon the Complainant’s request. After the termination of the license, Respondent acknowledged that it should and would transfer the Domain Name to the Complainant in accordance with the agreement, but failed to do so. In Green Tyre, the complaint was denied because the Respondent did not have the requisite bad faith when it registered the Domain Name.
C. Additional Submissions
Complainant
The Complainant made the following additional submissions : -
· Respondent does not dispute that the domain names at issue contain Complainant’s US Trademarks 1,184,796 and 2,173,279 (CONTOUR). Thus, each and every domain name in dispute constitutes a use of the Marks. Respondent does not have any legitimate interest in respect of the domain names that are the subject of the Complaint. Complainant in this regard refers to Paragraph 10(c) & (d) of the July 1, 2010 License Agreement between Leggett & Platt, Inc. and Hard Head Holdings, LLC provide that:
“(c) If this License Agreement expires or terminates, Licensee’s right to use the Licensed Marks [“CONTOUR”] (including without limitation, the rights granted by Licensee to a Sub-Licensee) shall terminate as of the date of expiration or termination except as Licensor may otherwise agree in writing.
(d) Except as specifically provided in Section 10(c) hereof, upon the
expiration or termination of this License Agreement, all of the rights of Licensee under this License Agreement shall terminate forthwith and shall revert immediately to Licensor. Licensee and any and all Sub-Licensees shall discontinue forthwith all use of the Licensed Marks at Licensee’s sole expense.” (emphasis added).
· The Complainant further refers to Paragraph 2(k) of Leggett License Agreement, providing that, “The Licensed Marks shall be and remain the sole and exclusive property of Elevation Bed, and Licensee shall not acquire any right, title or interest in or to the Licensed Marks or to any other intellectual property of Licensor or Elevation Bed.” The Licensed Marks sublicensed to Hard Head Holdings (described by Respondent as “an entity related to Respondent”) in the Leggett License Agreement include the Marks. Also on July 1, 2010, Hard Head and Respondent entered into a Sub-License Agreement (the “2010 M&M Sub-License Agreement”).
· The Complainant contends that Leggett License Agreement was terminated w.e.f. February 27, 2012. This Agreement had been terminated at the request of Hard Head Holdings (with whom Respondent had a sub-licencee agreement), made by it vide its letter dated January 11, 2012 and wherein it was also noted that the cancellation of the Leggett License Agreement would “automatically” cancel the Sub-License between Hard Head Holdings and Respondent (Ex. A).
· The Complainant contends that the Master Agreement between Leggett & Platt, Incorporated, and Elevation Bed LLC dated June 28, 2007, wherefrom Leggett and Platt derived its rights as a licensor of the Marks, was also terminated w.e.f. February 27, 2012 (Ex. B). The termination of the Leggett License Agreement ended any rights that Respondent had to use the disputed domain names.
· The Complainant contends that the disputed domain names have been used and registered in bad faith. Respondent’s use of the domain names after termination of the Leggett License Agreement constitutes a bad faith use of the domain names.
· In this regard, Complainant relies upon the decision of WIPO in C & A Veltins GmbH & Co. KG v. Heller Highwater Inc., D2004-0466 (WIPO August 27, 2004) wherein the Panel found that the respondent did not have any rights or legitimate interests in respect of the domain name at issue after the respondent was no longer in a business relationship with the complainant, based on the presumption that a right in a trademark is no longer valid when the business relationship between the parties is terminated. The Panel made its finding of bad faith use when the facts showed that the respondent, a former retailer for the complainant used the domain name at issue in order to market and sell products that competed with the complainant’s products.
· Complainant contends that the essential facts of C. & A. Veltins are also present in the present case, as opposed to Green Tyre Co. Plc. v. Shannon Group, D2005-0877 (WIPO Oct. 5, 2005), on which Respondent has primarily relied. After termination of the Leggett License Agreement, Respondent persisted in using the domain names in dispute to sell Complainant’s competing products. After February 27, 2012, visitors to each of the disputed domain names were directed to the website <easyrest.com>.
· The Complainant alleges that the Respondent had registered the AJM Domains in bad faith without Complainant’s knowledge. The Respondent, as an admitted direct licensee of the Complainant in 2007, had undeniable knowledge of the Complainant’s rights in the mark CONTOUR when Registrant registered the AJM Domains. The fact that the Respondent has not presented any license, permission or other rights relating to the Complainant’s mark CONTOUR permitting it to register the AJM Domains is a clear indication that the disputed AJM Domains were registered in bad faith. In fact, the Respondent was required to identify and transfer title to the AJM Domains to the Complainant per the New Era Agreement discussed below. The Respondent not only failed to identify and transfer the same to the Complainant but secretly maintained the same until the Complainant became aware that the Respondent was using such domain names in order to market and sell products that are competing with the Complainant’s licensee’s adjustable bed products (Kraftsow Decl. 3). These facts are all indications that the AJM Domains were registered in bad faith and after February 27, 2012, used in bad faith.
· Complainant counters that it is false/incorrect to state that the Complainant had “voluntarily relinquished control of the Elevation domain names to Respondent in furtherance of their licensing arrangement”. Complainant with New Era Media, LLC, AJM and the other “Dealers” entered into a License Agreement dated March 3, 2008 (the “New Era Agreement”), which required the following:
“Within thirty (30) days of the Effective Date [of the License Agreement], New Era Media, the Dealers and all other Sub-Licensees shall also assign and transfer to Licensor or shall cause the current registrants to assign to Licensor, free and clear of all liens and encumbrances, any and all right, title and interest to any other domain names containing or consisting of the terms “craftmatic” or “craft” or “contour” or any misspellings thereof including, without limitation, the domain names set forth on Exhibit 2” which included the Elevation Domains (emphasis added). New Era Agreement, Section 2(e)(v).”
See Ex. F.
· The Complainant further contends that the title to the subject Elevation Domains were belatedly transferred to Complainant by Respondent on June 24, 2008. Without Complainant’s knowledge, the Respondent maintained administrative and other control of the Elevation Domains which allowed it to transfer the same without permission to the Respondent. Such illicit transfer was only discovered upon termination of the Leggett License Agreement. Therefore, the registered Elevation Domains were maintained in bad faith by the Respondent and, after February 27, 2012, used in bad faith.
· The Complainant also contends that the title to the AJM Domains (which were registered without the Complainant knowledge or permission) was never transferred from the Respondent to the Complainant as required. It is not denied that the Respondent used the AJM Domains and the Elevation Domains at issue in order to market and sell products that are competing with the Complainant’s licensee’s adjustable bed products as set forth in the Complaint. When Respondent’s status as a sublicense of Complainant was terminated, the Respondent lacked any legitimate purpose to retain or use any of the contested domain names. Respondent has not presented any license, permission or other rights after the termination on February 27, 2012 relating to the Complainant’s mark CONTOUR which is a clear indication that the disputed AJM Domains and the Elevation Domains were used in bad faith. Further, such use of the AJM Domains and the Elevation Domains was nothing more than an intentional tortuous infringement by the Respondent of Complainant’s rights seeking to attract, for commercial gain, Internet users to the Respondent’s website located at www.easyrest.com by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or the products offered at their sites.
· The Complainant alleges that the Respondent’s failure to transfer the AJM Domains to Complainant under the New Era Agreement and its surreptitious actions in secretly transferring title to the Elevation Domains back to itself without knowledge or permission from Complainant are clear evidence of the Registrant’s bad faith registration and use of the same.
· The Complainant in its additional submissions contends that the Respondent makes several assertions in its Response that are entirely irrelevant to matter at hand, Complainant’s right to ownership of the domain names. First, Respondent asserts that, because Hard Head paid Complainant a $10,000 annual royalty fee pursuant to the Leggett License Agreement and Hard Head did not receive any portion of that fee back from Complainant after the termination, Respondent should have the right to use the Marks until June 30, 2012. The Leggett License Agreement contains no such provision. As set forth above, it simply provides that a termination shall result in the Licensee and any sub-licensees immediately losing any rights in the Marks.
· Complainant contends that the Respondent in its response asserts that the Leggett License Agreement and the 2010 M&M Sub-License Agreement allow for “internet orders.” The Complainant submits that the scope of these now defunct agreements is wholly irrelevant to Respondent’s use of the domain names and the rights to the domain names going forward. Moreover, there was no legal or business requirement for Respondent to make sales using the disputed domain names. Respondent also points to the fact that the domains are not currently being used by Respondent and are currently inaccessible. This too has nothing to do with the rights to the domain names going forward. The Complainant alleges that the Respondent seeks to camouflage its willful misuse of the domain names by claiming that “Respondent is not intentionally attempting to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark.” This ignores the fact that the Respondent was indeed recently engaging in this very conduct.
· The Complainant further alleges that the Respondent further states that this matter is not properly represented before this forum as it is simply a business dispute between a former licensor and licensee. Nevertheless, Respondent raises tangential matters relating to its business relationship with the Complainant.
· Complainant asserts that it has never “voluntarily relinquished” control of any of the disputed domain names.
Respondent
The Respondent made the following additional submissions :
· The Respondent contends that the Complainant’s Additional Submission evidences that the matter at hand is a business dispute between a former licensor and licensee and therefore, improperly before this forum. “To attempt to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy.” To substantiate its contention, the Respondent has relied upon the decision of WIPO in The Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) - (citing Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) – holding that the dispute concerning employee’s registration of domain name in his own name and subsequent refusal to transfer it to employer raises issues of breach of contract and breach of fiduciary duty that are more appropriately decided in court, not before a UDRP panel.
· The Respondent contends that as set forth by it in its Response, it has paid for the right to use the CONTOUR trademark until June 30, 2012 (and has not received any refund of this amount); thus, it has a legitimate interest in continuing to own and/or use the domain names at issue. Thus, it is clear that the parties’ dispute as to whether termination of the Leggett License Agreement ended any rights Respondent had to continue to own and/or use the domain names, is a contractual matter and not one that should be decided by this Panel.
· The Respondent alleges that the present matter is a business dispute, and therefore, it should be denied in its entirety, as this is not the proper forum for adjudication of such a dispute.
· The Respondent contends that a Complainant has to prove that a domain name was both registered and used in bad faith, and if the Complainant cannot do so, the Complaint should be denied. The Respondent in this regard has relied upon the decision of WIPO in Camon S.p.A v. Intelli-Pet, LLC, D2009-1716 (WIPO March 12, 2010) for a thorough analysis of this issue.
· The Respondent contends that in its Complaint, the Complainant has made no allegation that the disputed domain names were registered in bad faith, and the Complaint should be denied on that ground alone. The Respondent reiterates that as set forth by it in the Response, four of the disputed domain names were not even registered by the Respondent, but were instead registered by Complainant, and then control of the domains was voluntarily transferred to Respondent by Complainant so that Respondent could use the domain names in connection with its authorized use of Complainant’s CONTOUR trademark; namely, “countourbed.com”, “contourbed.net”, “contourbeds.com” and “contourbeds.net”. The remaining four domain names were registered by AJM (a predecessor of Respondent) in furtherance of the licensing agreement ─ prior to the effective date of the New Era Agreement that Complainant submits in furtherance of its arguments. The evidence is clear that none of the eight domain names at issue were registered in bad faith, and Complainant does not allege in the Complaint that they were.
· The Respondent contends that the Complainant has incorrectly argued that “the fact that the Respondent has not presented any license, permission or other rights relating to the … mark CONTOUR permitting it to register the AJM Domains is a clear indication that the disputed AJM Domains were registered in bad faith.” To the contrary, as previously set forth in the Response, the AJM Domains were registered on September 1, 2007 by AJM (a predecessor of Respondent) when AJM was a licensee of Complainant in furtherance of the licensing arrangements. That license agreement explicitly permitted internet orders, which clearly anticipates that the licensee must have a website through which to make sales; thus, it was understood that AJM (and its successors) would have a website (and domain name) in order to sell and market the products on the internet.
· Complainant relies on the New Era Agreement to argue that Respondent failed to identify and transfer the AJM Domains to Complainant and secretly maintained the same until the Complainant became aware that that Respondent was using such domain names to market and sell competing products. This is inaccurate. First, Complainant was aware ─ or should have been aware ─ of the existence of the AJM Domains at the time the New Era Agreement was entered into, yet the domains were not mentioned in the New Era Agreement. Complainant, as the trademark owner, has a duty to police its trademark and monitor what its Licensees are doing; therefore, it is not plausible that Complainant was unaware of the existence and use of the AJM Domains in furtherance of the parties’ licensing arrangement.
· Complainant further relies on the New Era Agreement (to which AJM was party) to argue that Complainant did not voluntarily relinquish control of the Elevation Domains. However, at the time Complainant voluntarily relinquished control of the Elevation Domains to Respondent in October 2009, AJM had been dissolved, and the agreements currently in place were the Hard Head License Agreement (and the 2009 M&M Sub-License Agreement). At the time the Hard Head License Agreement was entered into, Elevation still owned the Elevation Domains; thus, Complainant cannot argue that the Elevation Domains were registered by Respondent, let alone that they were registered by Respondent in bad faith.
· The Respondent reiterates that the disputed domain names were not registered in bad faith; and hence, the Complainant’s request for transfer of the disputed domain names must be denied on this basis alone.
· The Respondent contends that neither the AJM Domains nor the Elevation Domains are currently being used by Respondent, and the domains are inaccessible; thus, the domain names are not being used in bad faith.
· Respondent contends that the Complainant has relied upon the decision of WIPO in C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc., Case No. D2004-0466 (WIPO August 27, 2004) to support its claim. However, that case is distinguishable.
· Similarly, the Complainant has also relied upon the decision in “In Veltins” case, wherein the Respondent in that case did not have a license or other permission to register the domain name at issue. The Veltins panel noted that “the fact that the Respondent did not have any license, permission or other rights relating to the Complainant’s mark VELTINS is an indication that the disputed domain name was registered in bad faith.” The Panel found that “these facts, as well as the lack of any clear written indication that the Complainant agreed to the initial registration of the disputed domain name, the circumstances of the dispute between the parties and the current bad faith use are all indications that the disputed domain name was originally registered in bad faith.”
· The Respondent contends that unlike in Veltins case, in the present case it is not disputed that the parties had a license through which Respondent herein was allowed to use the CONTOUR mark and make internet sales of the licensed products. It is disputed as to whether Respondent has the right to continue to own and use the domains at least until June 30, 2012 ─ as this is the date through which Respondent paid a license fee. Moreover, in this case the AJM Domains were not registered in bad faith, but instead were registered and used while AJM (a predecessor of Respondent) had the license from Complainant to use the trademark at issue. Additionally, it was the Complainant ─ not Respondent ─ who registered the Elevation Domains and then knowingly ceded control of those domains to Respondent. Furthermore, unlike in Veltins, Respondent is not currently using any of the domains as they are all inaccessible.
· The Respondent contends that Veltins is distinguishable from the case at hand. The present is, at best, a business dispute between the parties - a former licensor and licensee, and these types of matters are not suitable for resolution using a UDRP proceeding. Hence, the present Complaint be denied in its entirety.
· The Panel finds that the Complainant is having the trade mark registration with USPTO for the mark “CONTOUR” since 5th January, 1982. The Complainant has used the CONTOUR mark on its products since at least 1978. The Complainant is in the business of licensing the CONTOUR brand name on adjustable beds and bedding. It is observed that Contour Adjustable Beds (Respondent herein) is not a legal entity; but is a trade name that was used by M&M Bedding, LLC (for short “M&M”).
· On June 28, 2007 the Complainant entered into a non-exclusive Dealer Licence Agreement with AJM Enterprises (an entity upon dissolution of which in June 2009 Respondent was formed), inter-alia, to use the CONTOUR marks, to market, promote, and sell electronic adjustable beds and mattresses. Internet orders were allowed under this agreement.
· On June 28, 2007, Complainant and AJM Enterprises (a former business entity that was related to Respondent) entered into a Dealer License Agreement, were Complainant granted AJM a non-exclusive license to use the CONTOUR marks, among others, to market, promote, and sell electronic adjustable beds and mattresses. Internet orders were allowed under this agreement.
· Subsequently, on July 1, 2009, Complainant entered into a license agreement with Hard Head Holdings, LLC. This license agreement had contemplated for a sub-license to Respondent and had also allowed for Internet orders. Accordingly, on July 1, 2009, Hard Head granted a sub-license to Respondent, and it began to sell CONTOUR products to customers. Pursuant to this agreement, an entity called Leggett & Platt, Inc., who also had a non-exclusive license from Complainant, exercised its option to obtain an exclusive license for the CONTOUR marks.
· On July 1, 2010, Leggett & Platt, Inc., who also had a non-exclusive license from Complainant to use the CONTOUR marks, inter-alia, to market, promote, and sell electronic adjustable beds and mattresses, sub-licensed its rights to Hard Head by entering into a sub-license agreement simultaneous to this agreement. Internet orders were allowed under this agreement. Under the Leggett License Agreement, Hard Head was required to pay to the Complainant an annual royalty fee of $10,000. Hard Head further sub-licenced its agreement with the Respondent herein against payment of royalty fee. This sub-licence agreement was continued / renewed by the Respondent by making the annual royalty payment in terms of the sub-licence agreement for use the CONTOUR mark from July 1, 2011. The Respondent contends that by making the annual royalty payment its sub licence agreement has been renewed upto June 30, 2012.
· The License Agreement between the Complainant and the Leggett & Platt, Inc. was terminated on February 27, 2012. In terms of the licence agreement between the Complainant and the Leggett & Platt, Inc., the sub-licence agreement between Leggett and Hard Head also comes to an end by virtue of termination of the licence agreement between the Complainant and the Leggett on February 27, 2012. However, the Respondent herein contends that it has not been returned the pro-rata amount of the royalty fee upon this termination the agreement and that after payment of the annual royalty fee to Hard Head his sub-licence agreement with Hard Head is valid for another one year from July 1, 2011, i.e. upto June 30, 2012.
· Respondent contends that it is only after the termination of its sub-licence agreement with Leggett that Complainant has objected to Respondent’s ownership of the disputed domain names.
· The Complainant alleges that Respondent’s domain names uses its trademark and disrupts Complainant’s business. Indeed, trademark infringement law prevents only unauthorized usage of a trademark in connection with a commercial transaction in which the trademark is being used to confuse potential customers.
· The Complainant contends that the Respondent had registered the AJM Domains in bad faith without Complainant’s knowledge. It is also to be observed that the Complainant has contended that the domains are not currently being used by Respondent and are currently inaccessible.
· Even when the Respondent has raised the contention that the present dispute may not fall within the purview of the policy, there is no dispute regarding the termination dated 27th February 2012 and the Respondent has further stated that in the absence of non-return of proportionate fee, it can use the disputed domain name till 30th June 2012.
· The Panel finds that the disputed domain names registered by the Respondent are confusingly similar to the trademark “CONTOUR” of the Complainant; in the light of the admitted position regarding the stipulations of termination of the license prohibiting its user thereafter i.e. after 27th February 2012 and even in the light of the argument by the respondent that non-return of proportionate license fee entitles it to use the disputed domain name till 30th June 2012. Further, in the light of these admitted facts not requiring any proof or evidence, Panel would agree that in any case after 30th June 2012, Respondent – in terms of its own submissions, would have no rights or legitimate interests in relation to the domain name. The user of the domain name would be in bad faith.
· The Panel also finds that disputed domain names deserve to be transferred to the Complainant and the Respondent is not entitled to use these domain names. The Complainant deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
The Panel finds that since the Respondent has primarily raised the issue that the dispute in the present Complaint has arisen as a result of licence agreement between the parties and hence being a business/contractual dispute, is outside the purview of the UDRP. Having regard to this, the Panel is taking up first the issue whether or not the dispute in the present Complaint falls under the business / contractual dispute:
· Respondent asserts that it should be considered to have registered the domain names at issue in good faith and that it has legitimate interests in the domain names because it and its affiliates were licensed to use the CONTOUR marks and the domain names at issue. Respondent contends that Contour Adjustable Beds is not a legal entity, but is a trade name that was used by M&M Bedding, LLC. Therefore, Respondent asserts that the matter at hand is a business dispute and is not properly before this forum as the domain names at issue were neither acquired nor used in bad faith. Respondent gives the following as a timeline of events in its relationship with Complainant:
1. On June 28, 2007, Complainant and AJM Enterprises (a former business entity that was related to Respondent) entered into a Dealer License Agreement, were Complainant granted AJM a non-exclusive license to use the CONTOUR marks, among others, to market, promote, and sell electronic adjustable beds and mattresses. Internet orders were allowed under this agreement.
2. In June of 2009, AJM dissolved and Respondent was formed.
3. On July 1, 2009, Complainant entered into a license agreement with Hard Head Holdings, LLC (an entity related to Respondent). This license agreement specifically contemplated a sub-license to Respondent and allowed for Internet orders.
4. Also on July 1, 2009, Hard Head granted a sub-license to Respondent and M&M began to sell CONTOUR products to customers.
5. Subsequent to this agreement, an entity called Leggett & Platt, Inc., whom also had a non-exclusive license from Complainant, exercised its option to obtain an exclusive license for the CONTOUR marks.
6. On July 1, 2010, Leggett sub-licensed its rights to Hard Head and Hard Head entered into a sub-license agreement simultaneously to this agreement.
7. Under the Leggett License Agreement, Hard Head paid Complainant an annual royalty fee of $10,000. The most recent payment was made for the right to use the CONTOUR mark from July 1, 2011 through June 30, 2012.
8. On February 27, 2012, the Leggett License Agreement was terminated. Hard Head did not receive any portion of the royalty fee back from Complainant upon this termination.
9. It was not until the termination of the Leggett License Agreement that Complainant objected to Respondent’s ownership of the domain names at issue.
· Respondent argues that it should be allowed to use the CONTOUR marks until June 30, 2012, through its contractual agreement with Complainant. Respondent maintains that this action is between two business entities and pertains to a license agreement between several related parties which should preclude a UDRP Panel from making a decision in this matter.
· In its Additional Submission Complainant first asserts that its termination of the Leggett License Agreement ended any rights that Respondent had to use the domain names. Complainant also notes some of the terms regarding the expiration or termination of the license agreement with Leggett and Hard Head Holdings, which the Panel may find appear to state that upon the termination of any such agreement that the parties to the contract will discontinue their use of the licensed marks. Further, Complainant notes that the terms of the Leggett License Agreement also contain a clause that states that the licensed marks remain the sole and exclusive property of Complainant and that the licensee will acquire no rights or title interests in the marks under license. Complainant also notes that Respondent acknowledged that the Legett License Agreement was terminated on February 27, 2012. Further, Complainant argues that the license agreement was terminated at the request of Hard Head Holdings in a letter dated January 11, 2012, which also noted that the cancellation of the Leggett License Agreement “automatically” cancelled the sub-license between Hard Head Holdings and Respondent. Complainant asserts that since the “Master Agreement,” dated June 28, 2007, was terminated, all subsequent sub-licenses were also terminated, thereby removing Respondent’s rights to use the trademarks subsequent to February 27, 2012.
· Having regard to the admitted facts as set out above, the Panel finds that the decision of WIPO in C & A Veltins GmbH & Co. KG v. Heller Highwater Inc., D2004-0466 (WIPO August 27, 2004), wherein the Panel found that the respondent did not have any rights or legitimate interests in respect of the domain name at issue after the respondent was no longer in a business relationship with the complainant, based on the presumption that a right in a trademark is no longer valid when the business relationship between the parties is terminated – would apply. The Panel made its finding of bad faith use when the facts showed that the respondent, a former retailer for the complainant used the domain name at issue in order to market and sell products that competed with the complainant’s products.
· Hence, the Panel holds that there is sufficient evidence for it to properly decide the dispute under the UDRP, proceed with the case and consider the contentions of Complainant and Respondent. The Panel in this regard, finds the following decisions of WIPO to be relevant:
(i) Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) – holding that “Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”; and
(ii) Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) – holding that “This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”
· This is not a case where any complicated facts are involved requiring determination of the disputes by leading evidence. The admitted position which emerges even as per the contentions raised on behalf of the Respondent is that in any case Respondent would not have any right whatsoever regarding the disputed domain names after 30th June 2012.
· The Panel, in the facts and circumstances of the present case, does not agree with the contention of the Respondent of absence of jurisdiction and rejects the same.
· Complainant presents two trademark registrations that it owns with the United States Patent and Trademark Office ("USPTO") for the CONTOUR mark (e.g., Reg. No. 1,184,796 registered January 5, 1982). Based upon this evidence the Panel finds that the Complainant has protectable rights in the CONTOUR mark under Policy 4(a)(i). The Panel finds the following decisions of this Forum to be relevant in this regard:
(i) Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) - holding that the complainant had established rights in the PAISLEY PARK mark under Policy 4(a)(i) through registration of the mark with the USPTO); and
(ii) Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) - holding trademark registration with the USPTO was adequate to establish rights pursuant to Policy 4(a)(i).
· The Panel finds that Respondent’s Response has admitted that “Respondent does not dispute that the domain names at issue contain the trademark which the Complainant alleges to have rights.”
· The Panel observes that Complainant does not make any arguments regarding the confusingly similar nature of the disputed domain names. However, the Panel finds that the contourbeds.com, contourbeds.net, contourbed.com, contourbed.net, contouradjustablebeds.com, contouradjustablebeds.net, contouradjustablebed.com, and contouradjustablebed.net domain names are identical. The Panel finds that each of the domain names contains Complainant’s CONTOUR mark entirely, in addition to the descriptive terms and phrases “bed”, “beds”, “adjustable beds” or “adjustable bed” and the addition of the generic top-level (“gTLD”) “.com” or “.net” to it are not significant enough changes to Complainant’s mark to render the domain names distinct from the mark. The Panel finds the following decisions of this Forum to be relevant in this regard:
(i) Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) – holding that <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”; and
(ii) Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) - holding 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).
· The Panel observes that prior UDRP panels have determined that the addition of a descriptive term and a gTLD do not render a domain name distinct from an asserted mark where the domain name contains a complainant’s trademark entirely. In this regard, the Panel finds the following decisions of this Forum to be relevant:
(i) Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) - holding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity;
(ii) Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) - holding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark; and
(iii) Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) – holding that “The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i).”
· Therefore, the Panel finds that the Respondent’s disputed domain names are confusingly similar / identical to Complainant’s CONTOUR mark under Policy 4(a)(i).
· The Panel observes that Complainant must first make 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 shifts to Respondent to show it does have rights or legitimate interests. In this regard the Panel finds the following decisions of this Panel to be relevant:
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); and
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
· The Panel observes that the Respondent argues that it has rights and legitimate interests in the disputed domain names because it had been operating under a license agreement through its related entities. Respondent also argues that it recently made a payment under the license agreement granting it rights in the CONTOUR mark until June 30, 2012. The Respondent further asserts that all of the license agreements included online sale options within their terms. The Panel finds the that Respondent or its affiliate companies was a licensed seller of Complainant’s goods through the license agreements identified by Respondent.
· The Panel observes that the Complainant, in its Complaint, merely contends that Respondent should be considered as having no rights or legitimate interests in respect of the domain names at issue. The Panel further observes that Complainant does not make any arguments relating to Policy 4(c)(ii). The Panel also observes that the WHOIS information for the disputed domain names identifies “Contour Adjustable Beds” as the registrant. The Panel finds that Respondent does not make any arguments relating to being commonly known by the disputed domain name. Based upon the lack of an argument from Respondent, the Panel finds that the Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii), despite the appearance that Respondent is known by the domain names.
(i) Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); and
(ii) AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
· The Panel observes that the Complainant does not provide any evidence of Respondent’s use of the disputed domain names. The Panel also observes that the Respondent asserts that its domain names are inaccessible to the public, but that Respondent does not provide any such evidence to show that either. Therefore, the Panel is relegated to the arguments of Complainant to make its decision under Policy 4(a)(ii). The Panel accepts Complainant’s contentions concerning Respondent’s use of the domain names, and finds that Respondent is not making 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). The Panel, in this regard, finds strength from the following decisions of this Forum:
(i) Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) - holding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services; and
(ii) Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) - holding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks.
· Complainant in its Additional Submission further contends that any right that Respondent previously had in the domain names was extinguished upon the termination of the applicable license agreement discussed above. The Panel agrees with this argument and finds accordingly under Policy 4(a)(ii). The Panel finds strength from the following decisions of this Forum:
(i) Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corp. v. Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002) – holding that “Respondent cannot use Complainant’s trademark in a domain name when the Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name”; and
(ii) UVA Solar GmbH & Co. K.G. v. Kragh, D2001-0373 (WIPO May 7, 2001) - holding that a former distributor of the complainant’s products maintained rights and legitimate interests in respect to a domain name during the duration of its distributorship agreement, but such rights and interests ceased upon termination of the agreement.
· The Panel observes that the Respondent asserts that its registration and use of the disputed domain names should be considered to have been made in good faith as it was operating under a valid license agreement until very recently. The Respondent admits in its Response that four of the disputed domain names were not even registered by Respondent, but were registered by Complainant and were voluntarily transferred to Respondent. The Respondent further admits that the remaining four domain names were registered by AJM (a predecessor of Respondent) in furtherance of the licensing agreement. Therefore, Respondent asserts that Complainant cannot prove that the domain names were both registered and used in bad faith. The Panel does not find itself in agreement with the contentions of the Respondent.
· The Panel observes that the Complainant in its Complaint argues that, “by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or comments.” The Panel also observes that the Complainant has not provided any other arguments or evidence to support its assertion within its Complainant, but that under Policy 4(a)(ii) Complainant asserted that the domain names resolve to its competitor. The Panel finds that Respondent has registered and uses the disputed domain name in bad faith under Policy 4(b)(iv). In this regard, the Panel finds the following decisions to be relevant:
(i) MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) - holding bad faith under Policy 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark; and
(ii) Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) - holding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant.
· It has been contended by the Complainant that despite Respondent’s assertions to the contrary, it never authorized Respondent to register the domain names. The Panel observes that the Complainant contends that it never “voluntarily relinquished” control of any domain names to Respondent. In any case, the Panel finds that the contention of the Complainant that after the termination of the license agreement is evidence of Respondent’s bad faith use of the domain names – is entirely acceptable. The Panel finds that the expiration or termination of the license agreement between the parties extinguished Respondent’s good faith registration of the domain names under Policy 4(a)(iii). In this regard, the Panel finds strength from the decision of this Forum in Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) - holding that the respondent’s use of the KIOTI mark within a domain name without express authorization from the complainant violated the terms of the respondent’s licensing agreement and evidenced bad faith use of the domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <contourbeds.com>, <contourbeds.net>, <contourbed.com>, <contourbed.net>, <contouradjustablebeds.com>, <contouradjustablebeds.net>, <contouradjustablebed.com>, and <contouradjustablebed.net> domain names be TRANSFERRED from Respondent to Complainant.
(MANINDER SINGH)
Panelist
Dated: 28.04.2012
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