Fosbrooke, Inc. v. ravindra bala
Claim Number: FA1608001689535
Complainant is Fosbrooke, Inc. ("Complainant"), represented by James R. Davis of Arent Fox LLP, District of Columbia, USA. Respondent is ravindra bala ("Respondent"), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tnmattress.com> and <tnmattresses.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2016; the Forum received payment on August 17, 2016.
On August 17, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <tnmattress.com> and <tnmattresses.com> 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 August 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to email@example.com, and firstname.lastname@example.org. Also on August 18, 2016, 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 September 7, 2016.
A timely Supplemental Filing was received from Complainant and determined to be complete on September 9, 2016.
A timely Supplemental Response was received and determined to be complete on September 12, 2016.
On September 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant is a direct-to-consumer seller of mattresses. Complainant has marketed its products under the T&N mark since late 2014, using the domain name <tuftandneedle.com>. Complainant subsequently purchased the domain name <tn.com>; this transaction received substantial publicity beginning on or about September 6, 2015. Complainant states that it and its brands have received significant press coverage, and notes that more than 63,000 consumers "like" its Facebook page and more than 7,000 consumers follow its Twitter account.
Complainant holds a U.S. trademark registration for T&N as a standard character mark. The application was published for opposition on August 4, 2015, and the registration issued on October 20, 2015; it reflects a first use date of November 2014. Complainant also claims trademark rights in TN (with the ampersand omitted) and TN.COM. On August 31, 2015, Complainant applied to register TN with the U.S. Patent & Trademark Office; the application is currently pending.
The disputed domain names <tnmattress.com> and <tnmattresses.com> were registered by Respondent on September 9, 2015, a few days after the press began publishing articles about Complainant's acquisition of <tn.com>. The domain names resolve to web pages comprised of offers to sell the domain names and other advertisements.
Complainant contends that the disputed domain names are confusingly similar to its marks, adding only the generic term "mattress" in singular or plural form. Complainant accuses Respondent of being a "serial cybersquatter," and cites five previous decisions under the Policy in which Respondent has been determined to have registered domain names in bad faith (including <aolww.com>, <scotchtapes.com>, <microsoftwareco.com>, and <capitalonemail.com>). Complainant asserts that Respondent is not commonly known by the domain names, and that Respondent has no legitimate business operations or interests in the mattress industry. On these grounds Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names, and that the disputed domain names were registered and are being used in bad faith.
Respondent accuses Complainant of attempted reverse domain name hijacking, asserting that the disputed domain names are indicative of descriptive expressions, were registered before the Complainant accrued trademark rights, and are not confusingly similar to the Complainant's sole trademark.
Respondent contends that the disputed domain names are not confusingly similar to a mark in which Complainant has rights. Respondent notes that Complainant's only registered trademark is T&N, and the registration for that mark issued on October 20, 2015, while the disputed domain names were registered by Respondent on September 9, 2015.
Respondent disputes Complainant's claim of trademark rights in TN, noting that Complainant's application to register the TN mark is still pending, and that it was filed on August 31, 2015, on a 1B basis, indicating that Complainant was not yet using the TN mark. Respondent also disputes Complainant's claim of trademark rights in TN.COM, noting that registration of the corresponding domain name does not automatically confer trademark rights upon Complainant. Respondent states that Complainant's purchase of the domain name <tn.com> occurred on September 3, 2015, as reflected in Whois history reports, and argues that TN and TN.COM could not possibly have acquired secondary meaning and common-law rights within the few days between that date and Respondent's registration of the disputed domain names.
Respondent alleges that the dominant and most distinctive element of Complainant's T&N mark is the ampersand, which is omitted in the version of the mark that appears within the disputed domain names. Respondent contends that the disputed domain names <tnmattress.com> and <tnmattresses.com> are not confusingly similar to T&N, arguing (inter alia) that T&N "is simply a three-letter string, of which one letter is omitted" in the disputed domain names, and thus the disputed domain names are not confusing "as to the whole of the trademark."
Respondent states that the disputed domain names were acquired at the same time as other domain names including <topnotchmattress.com> and <topnotchmattresses.com>, and that the "tn" in the disputed domain names represents an abbreviation for "top notch." Respondent notes that "tn" is also an abbreviation for "Tennessee" and other terms. Respondent contends that he has rights or legitimate interests in the disputed domain names, based upon their generic or descriptive nature, and that he registered them for this reason and not in bad faith.
C. Additional Submissions
Complainant's Additional Submission, in relevant part, asserts that Complainant's trademark rights extend back long before Respondent's registration of the disputed domain names. Complainant argues that Respondent's registrations of <topnotchmattress.com> and <topnotchmattresses.com> were "pretextual, transparent attempts to justify his cybersquatting," noting that Respondent has not even claimed any connection to the mattress business apart from the registration of these domain names. Complainant cites an exhibit provided by Respondent showing his association with over 15,000 domain name registrations, in addition to his having lost several prior proceedings under the Policy, as evidence of serial cybersquatting.
Respondent's Additional Submission responds to the claims in Complainant's Additional Submission and reiterates Respondent's position that "tn" is a generic term. The submission includes a copy of a Google search for "tn" in which references to Complainant do not appear within the first 100 results.
The Panel finds that each of the disputed domain names is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.
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 holds a U.S. trademark registration for T&N. The registration or priority date of a mark is not relevant for purposes of Paragraph 4(a)(i) of the Policy, which merely requires that Complainant have rights in a relevant mark. See Reckitt Benckiser Plc v. Eunsook Wi, D2009-0239 (WIPO May 20, 2009); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, ß 1.4 (2d ed. 2011), available at http://www.wipo.int/amc/en/domains/search/overview/.
The Panel rejects Respondent's assertion that the ampersand is the dominant and most distinctive element of Complainant's T&N mark. The ampersand is merely a typographical symbol, and as such commonly is disregarded in the assessment of confusing similarity under the Policy. See, e.g., B&H Foto & Electronics Corp. v. Avi Lang, D2016-0525 (WIPO May 19, 2016) (finding <bhphoto.video> confusingly similar to B&H); Alex and Ani, LLC v. Domain Admin / Whois Privacy Corp., FA1651702 (Forum Jan. 19, 2016) (finding <aaoutlet.com> confusingly similar to both AA and A&A); H & M Hennes & Mauritz AB v. Domain Admin, PrivacyProtect.org / Horario Mendoza, DCO2014-0008 (WIPO June 24, 2014) (finding <hmstore.co> confusingly similar to H & M); AT&T Intellectual Property II, LP v. Domaine Enterprise, FA1376347 (Forum Apr. 14, 2011) (finding <wirelessatt.com> confusingly similar to AT&T). Furthermore, the generic terms "mattress" and "mattresses" refer to the very products for which Complainant uses its mark, and therefore contribute to the similarity between the domain names and the mark. Accordingly, the Panel finds that the disputed domain names <tnmattress.com> and <tnmattresses.com> are confusingly similar to Complainant's T&N mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain names combine Complainant's T&N mark, minus the ampersand, with the generic term for Complainant's products, and their sole apparent use has been for web pages comprised of offers to sell the domain names and other advertisements. Respondent claims that he registered the domain names as shortened forms of "top notch mattress(es)" rather than as references to Complainant. The question of Respondent's rights or legitimate interests turns on the credibility of this claim, effectively merging into the question of whether Respondent registered and is using the domain names in bad faith. See Google Inc. v. Texas International Property Associates, FA 1212995 (Forum Aug. 25, 2008). The Panel therefore considers it in that context.
Finally, Complainant must show that the disputed domain names were registered and have been used in bad faith. Under paragraph 4(b)(i) of the Policy, bad faith may be shown by evidence that a domain name was acquired "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(ii), bad faith may be shown by evidence that a domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] ha[s] engaged in a pattern of such conduct." Under paragraph 4(b)(iii), bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
In this case there is circumstantial evidence supporting most or all of the circumstances set forth in paragraph 4(b) of the Policy. Respondent appears to be an active domain name investor, and he registered <tnmattress.com> and <tnmattresses.com> only a few days after it was widely reported in the domain name press that the domain name <tn.com> had been acquired by a startup mattress seller. Complainant's registered trademark T&N has been in use since later 2014, well before Respondent registered the disputed domain names. Finally, Respondent has engaged in a pattern of bad faith domain name registrations, although it is not clear that the purpose has been to prevent trademark owners from reflecting their marks in corresponding domain names.
On the other side is Respondent's claim that he chose the domain names because they refer to "top notch mattresses" rather than for any connection to Complainant or its mark. Respondent's assertion is substantiated only by his own statements in the Response and his having registered two other domain names at the same time, <topnotchmattress.com> and <topnotchmattresses.com>.
Under the circumstances, the Panel is highly skeptical of Respondent's claim to have selected the domain names because of their generic or descriptive meaning, and tends to agree with Complainant's allegation that Respondent's contemporaneous registration of the other two domain names was merely pretextual. The Panel finds, based upon the preponderance of the available evidence, that Respondent intentionally targeted Complainant's T&N mark when he registered the disputed domain names; that Respondent registered the domain names primarily for the purpose of profiting from a potential sale to Complainant or a competitor thereof; and that Complainant registered and is using the domain names to profit by attracting Internet users to his website by creating a likelihood of confusion with Complainant's mark. Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tnmattress.com> and <tnmattresses.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 1, 2016
 Complainantís application to register TN was filed on a 1B (intent to use) basis, and is currently pending before the U.S. Patent & Trademark Office. On March 22, 2016, the office issued a Notice of Allowance, giving Complainant until September 22, 2016, to file a Statement of Use or an extension request. On September 20, 2016, Complainant filed a Statement of Use, in which it stated that the TN mark was being used on Complainantís online ordering website, and that the date of first use was March 28, 2016.
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