Mary's Futons, Inc. v.
Claim Number: FA0706001012059
PARTIES
Complainant is Mary's Futons, Inc. (“Complainant”), represented by Mary
Hughes, 4100 Redwood Highway, San Rafael, CA 94903. Respondent is Texas International Property Associates
- NA NA (“Respondent”), represented
by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <marysfuton.com> and <maryfuton.com>,
registered with Compana, LLC.
PANEL
The undersigned certifies that he has acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Hon. Sir Ian Barker, QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On June 29, 2007, Compana, LLC confirmed by e-mail to the
National Arbitration Forum that the <marysfuton.com> and <maryfuton.com>
domain names are registered with Compana, LLC
and that Respondent is the current registrant of the names. Compana, LLC
has verified that Respondent is bound by the Compana,
LLC registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On July 3, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 23, 2007 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@marysfuton.com and postmaster@maryfuton.com by
e-mail.
A timely Response was received and determined to be complete on
On
Additional Submissions were received from Complainant in a timely
manner on July 31, 2007 and from Respondent in a timely manner on August 7,
2007.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since 1983, Complainant has been operating a successful business under
the name of “Mary’s Futons,” selling futons and other furniture items from its premises
in
Complainant does not own any registered trademarks but relies on a
common law mark. The disputed domain
names are confusingly similar to Complainant’s <marysfutons> alleged
mark, although one letter is dropped in each name. Respondent uses the disputed domain names to
attract users to its site for commercial gain because the disputed domain names
lead to advertising portal pages with hyperlinks to vendors selling futons and
other merchandise. Presumably, Respondent
is paid on a click-through basis.
The site at <marysfuton.com>
contains a link to “Marys Futon” among the related searches in the left-hand
column. That link opens another page
where further links purporting to be Marys Futons, point instead to retail
aggregators.
Respondent has registered the disputed domain names in bad faith and is
using them in bad faith. The disputed
domain names utilize a trade name, well known in the futon market, for the
purpose of serving as parking pages for links to other retailers, thus
demonstrating intent to profit from confusion or mistake on the part of Internet
users who are considering doing business with Complainant. Respondent has no fair use basis for
registering the disputed domain names and has not registered other generic
names for the sale of futons. The implication
is that Respondent had prior notice of Complainant’s common law mark.
The similarity between the disputed domain names and Complainant’s
trade name and the purpose for which Respondent is using the disputed domain names
demonstrate that the names have been registered and are used solely to attract
for commercial gain Internet users to Respondent’s website by creating the
likelihood of confusion with Complainant’s mark as to the source, sponsorship,
affiliation and endorsement of Respondent’s website, or location of a product
or service on Respondent’s website or location.
On March 14, 2007, Complainant’s attorney sent a letter to Respondent alleging
trade name infringement. There was then some
correspondence between Complainant’s attorney and Mr. G W Tucker, the legal
representative of Respondent. On April
30, 2007 Mr. Tucker advised that Respondent was “not prepared to transfer the
disputed domain names to Complainant and a more formal letter would follow
early next week.” No letter followed and
Complainant’s attorney has received no further communications from Respondent.
B. Respondent
Complainant cannot overcome the fact that it does business in a single
store located in a town of some 56,900 people in
Although Complainant retails through the use of its website,
prospective customers cannot purchase items on line. They have to travel to Complainant’s sole
store to do so. Generic words in
combination are themselves a generic description. Examples were cited from various NAF
decisions. Complainant’s alleged trademark
is generic or just descriptive without a secondary meaning and there is no
enforceable trademark right under the Policy.
Respondent has legitimate rights and interests in the disputed domain
names. The fact that advertising revenues
may be generated by Respondent’s activity demonstrates a legitimate
interest.
Respondent registered the disputed domain names because it believed
they were terms to which no party had exclusive rights. It registers thousands of names, looking for
commonly used descriptive terms to which no party has exclusive rights,
including acronyms in common industry usage.
This evidence is Respondent’s good faith intent to register
non-protected words. See Landmark Group v. DigiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004),
where it was held that the respondent was entitled to have registered large
numbers of dictionary words and generated revenue by providing pay per ‘click’
advertising links related to the generic nature of each site’s domain name.
Respondent did not register and is not using the disputed domain names
in bad faith. It is in the business of
providing “locator services.” It did not
register the disputed domain names with intent to disrupt Complainant’s
business or to confuse consumers seeking to find Complainant’s websites. It did not register the disputed domain names
to prevent Complainant from owning a domain name incorporating its trademark which
was non-existent at the time of creation of the disputed domain names.
Respondent registers domain names that become available through
expiration and deletion, as well as those names which incorporate common words,
descriptive and generic terms and words and terms in which no party has
exclusive rights.
Respondent has created a good faith business, valuable to Internet
users seeking to locate providers of goods and services, through reference to
common well-known generic-descriptive and geographically descriptive terms.
Respondent submitted a copy of a petition that it filed in the Justice
of the Peace Court at
Respondent requests the Panel, if it does not defer its decision, to
conduct a live hearing with an opportunity to cross-examine opposing witnesses
on oath. It also requests that any
ruling for or against any party remain unpublished to avoid the creation of
bias in potential jury panelists.
C. Additional Submissions - Complainant
Complainant requests the Panel to grant the relief requested, despite
the institution of the proceedings in
Complainant’s common law trademark is neither generic nor
descriptive. It incorporates the given
name of the principal of Complainant’s business which she has operated with the
generic term for 25 years. The
geographical reach of Complainant’s advertising and sales is not relevant.
The “click-through” revenue operation of Respondent does not constitute
a legitimate offering of goods and services pursuant to Paragraph 4(c)(i) of the Policy or a legitimate non-commercial nor fair
use pursuant to Paragraph 4(c)(iii).
Respondent should have been aware at the time of registration that the
disputed domain names are variations on the spellings of Complainant’s trade
name. An Internet search would have
returned an enquirer directly to Complainant’s ongoing business. Respondent’s use of the disputed domain names
disrupts Complainant’s business by diverting potential customers to Respondent’s
websites.
Respondent has featured in several recent NAF cases and in one WIPO
Case (D2007‑0343) where its registration practices were commented on by
the Panelist as follows:
The frequency of these disputes suggests to
the Panel that the Respondent would be well advised to review its practices in
registering and using domain names.
If Respondent were truly in the business of “providing locator
services,” it would encourage customers to locate the site they wished to
reach, rather than diverting them to other sites.
D. Additional Submissions - Respondent
Respondent objects to the filing of Complainant’s Additional
Submissions. It asserts that the NAF
Supplemental Rule 7 is an improper modification of the Rules under the Policy. This Rule subverts the intention of the UDRP
that each party should only have one submission as of right. According to Respondent, Supplemental Rules
should deal only with “housekeeping” matters and not substantial modifications
of the rights of the parties. Complainant’s Additional Submission is unfair
to Respondent.
In any event, Complainant has no more than a “trade name” which is not
covered by the UDRP which protects only trademarks. Contrary to Complainant’s assertion, Respondent
owns a number of other domain names, including the word “futon”, and these have
been profitable for it.
FINDINGS
Complainant has a business established for 25
years of selling futons and other furniture from a location in
Respondent is in the business of the multiple
registration of domain names. It has been involved in a number of
proceedings under the Policy, both with NAF and with WIPO.
The disputed domain names resolve to a
website with “click-through” access to suppliers of goods and services.
Preliminary
Issues
(a)
Under
Rule 18(a) of the Policy, the Panel has the discretion to suspend or terminate
the administrative proceeding if there is a concurrent court proceeding.
However, the Panel has the discretion to proceed with its analysis and
render a decision in this proceeding. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) and BPI Commc’ns, Inc. & VNU Bus. Media, Inc. v.
Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002).
In both cases, the panel decided to proceed, despite the respondent
having filed a suit in the Federal Court.
There have been instances where panels have considered that the filing
of a court complaint was done in an attempt to delay or usurp the UDRP
process.
In the present case, the Panel considers that it should proceed to a
decision and that it should not suspend or dismiss Complainant’s claim pending
resolution of the proceedings in
(i) Respondent
did not provide the formal letter to Complainant’s attorney, giving reasons for
not transferring the disputed domain names as promised in its e-mail of April
13, 2007;
(ii)
it did
not reply to Complainant’s e-mail of April 17 2007, asking for a letter
justifying Respondent’s refusal to transfer the disputed domain names;
(iii)
moreover, the e-mail
of April 17, 2007 advised that the writer had checked the
(iv)
the proceedings were
filed in the
(v)
The
Petition alleged that Complainant (Defendant in the court proceedings) has “willfully
availed itself of the jurisdiction by contractually consenting to
jurisdiction.” No detail was provided of
how Complainant, a
The Panel might have taken a different view
on suspending proceedings had they been filed in either a US Federal Court –
where trademark and associated matters are often considered, or a State
Superior Court. The fact that damages of
only $500 are sought and the very name of the Tribunal indicate that the
Justice of the Peace Court in
The application to suspend or dismiss the
present proceedings is denied.
(b)
Secondly,
in the event of the Panel deciding to proceed to issue a decision, Respondent
asked for an in-person hearing.
Rule 13 of the Policy specifies that there
should be no in-person hearings (including hearings by teleconference,
video-conference and web-conference) unless a Panel decides in its sole
discretion, as an exceptional matter, that such a hearing is necessary in
deciding the Complaint.
In the thousands of cases which have now been
determined by both WIPO and NAF, there has been no occasion on which an
in-person hearing has been ordered. An
administrative proceeding under the Policy is not to be seen as a substitute
for court proceedings. This is a fairly
standard sort of domain name dispute with no exceptional circumstances which
would either deter the Panel from deciding it on the papers or which would
justify an in-person hearing. That application, therefore is denied.
(c)
Respondent
next asked for an order suppressing the decision because it might influence
potential jurors. Assuming there is the
right to a jury trial on a claim for $500 in a Justice of the Peace Court in
(d)
Dealing
Respondent’s submissions on the validity of Rules of the Supplemental Rules,
the Panel considers that this is not the appropriate forum to decide whether
they are ultra vires the Policy. Thousands of cases have been processed by NAF
under the Policy and numerous parties have utilised the Supplemental
Rules.
The Panel finds little untoward in Complainant’s Submissions which
really added little to the principal Complaint.
The Panel, therefore, will consider the Additional Submissions from both
parties.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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;
(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.
Although Complainant does not have a
registered trademark, it is still entitled to succeed under the Policy if it can
establish a common law trademark. A mere
“trade name” is not sufficient to obtain protection under the Policy.
A common law trademark must be shown by
evidence such as sales figures, advertising expenditure, numbers
of customers.
Another way of expressing the test is as
follows. See Capstar Radio Operating Co. v. Sterling
Trade names or marks which have, through usage,
become distinctive of the owner’s goods or services may be protectable as
common law marks because they have acquired a secondary meaning. Another way of looking at whether a common
law mark has been established is to enquire whether the person with the
competing mark is “passing-off” the alleged common law mark. See
BAA plc v Larkin, D2004-555 (WIPO
Nov. 11, 2004) where the Panel said:
As noted by the Panelist in
Passing off is a tort based upon the proposition
that it is unlawful to represent contrary to fact that one’s goods or services
are the goods or services of another. “Commonly, such misrepresentations are
made by using a name or mark which identifies the Claimant was otherwise a
symbol of his goodwill.” (ibid). The above quotations are taken from one of
the numerous cases where the common-law mark attached to a popular author. There are similar cases in respect of pop
stars and sporting personalities.
See similar comments about common-law marks in Luis Cobos v. West, North
The Panel considers, from the detailed business
information supplied by the Complainant, that although it has only one outlet,
it has established a common law mark in the name Mary’s Futons.
The undisputed evidence is that Complainant
has used the MARYS FUTONS mark continuously and extensively, since 1983, in
connection with the sale of futons and other furniture items. It has advertised heavily in
The fact that a secondary meaning may exist
only in a small geographic area does not limit Complainant’s rights in a common
law trademark. See Overview of WIPO Panel Views on Selected UDRP Questions,
paragraph 1.7 and the cases cited.
The Panel rejects the argument that the
common law mark is not valid because it consists of generic words. There is clear evidence of a secondary
meaning attaching to the words of sufficient stature to become a common law
trademark.
The disputed domain names are clearly
confusingly similar with Complainant’s common law MARYS FUTON marks. This is a clear case of typosquatting whereby
a trademark is replicated in a domain name but with either one or two letters
changed, omitted or added. There are
many UDRP cases involving typosquatting of this sort. See
Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO
Sep. 22, 2000).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts
to Respondent to show that it has rights or legitimate interests pursuant to Paragraph
4(a) of the Policy.
Respondent is not known by the disputed
domain names. Hosting websites to display
hyperlinks to various third-party websites does not of itself constitute a bona fide offering of goods or services
under Policy Paragraph 4(c)(i) or legitimate
non-commercial or fair use under Policy Paragraph 4(c)(iii). There is insufficient evidence to justify Respondent
availing itself of these provisions in the circumstances of Complainant’s
common law mark.
Although there could be an argument that a
relatively small business in one relatively small city in
Moreover, hyperlinks offering goods and services
on Respondent’s websites in competition with Complainant could cause a
disruption to Complainant’s business constituting evidence of bad faith
registration and use under the Policy.
See Paragraph 4(b)(iii). See Puckett v. Miller, D2000-0297
(WIPO June 13, 2000) as one example of decisions supporting this proposition.
Internet users are likely to use search
engines to find Complainant’s websites, only to be misled to Respondent’s
websites if they make a simple typing error.
The Panel, therefore, infers that the
disputed domain name was registered and is being used in bad faith.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <marysfuton.com>
and <maryfuton.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Sir Ian Barker, QC Panelist
Dated:
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