Sleep Country Canada Inc. v. Ling Shun
Shing
Claim
Number: FA0501000408255
Complainant is Sleep Country Canada Inc. (“Complainant”),
represented by Sean Campbell, of Davies, Ward, Phillips and Vineberg LLP, 1 First Canadian Place, Suite 4400, Toronto, ON M5X 1B1, Canada. Respondent is Ling Shun Shing (“Respondent”), 138 Yi Xue Yuan Road, Shanghai,
Null 200032, China.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sleepcountrycanada.com>, registered with Nameking.com,
Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 31, 2005.
On
January 31, 2005, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <sleepcountrycanada.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified that Respondent is
bound by the Nameking.com, Inc. 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
February 4, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 24, 2005 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@sleepcountrycanada.com
by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 3, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed John J.
Upchurch 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sleepcountrycanada.com>
domain name is identical to Complainant’s SLEEP COUNTRY CANADA mark.
2. Respondent does not have any rights or legitimate
interests in the <sleepcountrycanada.com> domain name.
3. Respondent registered and used the <sleepcountrycanada.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Sleep Country Canada Inc., is Canada’s largest mattress retailer. Complainant has spent over $100 million
since 1994 on advertising and has grown to be Canada’s leading specialty
retailer of mattresses. Complainant has
registered the SLEEP COUNTRY CANADA mark with the Canadian Intellectual
Property Office (“CIPO”) (Reg. Nos. TMA451876 issued December 15, 1995;
TMA456695 issued April 19, 1996).
Respondent
registered the <sleepcountrycanada.com> domain name on September
9, 2002. Respondent’s domain name
resolves to a website featuring links to competing bed and mattress providers.
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."
In view of
Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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
established rights in the SLEEP COUNTRY CANADA mark through registration with
the CIPO. See Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption.); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7,
2001) (finding that the Policy does not require that the mark be registered in
the country in which Respondent operates.
It is sufficient that Complainant can demonstrate a mark in some
jurisdiction).
Respondent’s <sleepcountrycanada.com>
domain name is identical to Complainant’s SLEEP COUNTRY CANADA mark. Respondent’s mere addition of the generic
top-level domain “.com” and the omission of the spaces between the terms of
Complainant’s mark is insufficient to distinguish Respondent’s domain name from
Complainant’s mark under Policy ¶ 4(a)(i).
See Kioti Tractor Div. v. O’Bryan Implement Sales, FA
210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's
domain name, <kioti.com>, is identical to Complainant's KIOTI mark
because adding a top-level domain name is irrelevant for purposes of Policy ¶
4(a)(i).”); see also Gardline Surveys Ltd. v.
Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum
May 27, 2003) (“The addition of a top-level domain is irrelevant when
establishing whether or not a mark is identical or confusingly similar, because
top-level domains are a required element of every domain name.”); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7,
2001) (finding <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”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s
failure to respond allows all reasonable inferences of fact in the allegations
of the Complaint to be deemed true); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000)
(finding that failing to respond allows a presumption that Complainant’s
allegations are true unless clearly contradicted by the evidence).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <sleepcountrycanada.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a Response, Respondent has failed to invoke any circumstance which
could demonstrate any rights or legitimate interests in the domain name); see
also Bank of Am. Corp. v.
McCall,
FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not
only results in its failure to meet its burden, but also will be viewed as
evidence itself that Respondent lacks rights and legitimate interests in the
disputed domain name.”).
Respondent is
using the <sleepcountrycanada.com> domain name, which is identical
to Complainant’s SLEEP COUNTRY CANADA mark, to operate a website featuring
links to competing bed and mattress providers.
Such use is not a use in connection with a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See
Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23,
2003) (holding that Respondent’s appropriation of Complainant’s mark to market
products that compete with Complainant’s goods does not constitute a bona fide
offering of goods and services); see also Winmark Corp. v. In The Zone,
FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights
or legitimate interests in a domain name that used Complainant’s mark to
redirect Internet users to a competitor’s website).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
<sleepcountrycanada.com> domain name or is authorized to register
domain names featuring Complainant’s SLEEP COUNTRY CANADA mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was
not commonly known by the mark and never applied for a license or permission
from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant is
using the <sleepcountrycanada.com> domain name, which is identical
to Complainant’s SLEEP COUNTRY CANADA mark, to operate a website featuring
links to competing bed and mattress providers.
Such use constitutes disruption and is evidence that Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii). See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from Complainant's marks suggests that Respondent,
Complainant’s competitor, registered the names primarily for the purpose of
disrupting Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by
attracting Internet users to a website that competes with Complainant’s
business).
Additionally,
the Panel infers that Respondent receives click-through fees for diverting
Internet users to the competing websites via the disputed domain name. Since Respondent is using a domain name
which is identical to Complainant’s mark, consumers searching for Complainant
online who access Respondent’s domain name may become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s commercial use of the <sleepcountrycanada.com>
domain name constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding bad faith where Respondent attracted
users to a website sponsored by Respondent and created confusion with
Complainant’s mark as to the source, sponsorship, or affiliation of that
website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Furthermore,
Respondent registered the <sleepcountrycanada.com> domain name
with actual or constructive knowledge of Complainant’s SLEEP COUNTRY CANADA
mark due to Complainant’s registration of the mark with the CIPO. Moreover, the Panel finds that Respondent
had actual knowledge of Complainant’s rights in the mark due to the obvious
connection between Complainant and the content featured on Respondent’s
website. Thus, the Panel finds that
Respondent registered and used the <sleepcountrycanada.com> domain
name in bad faith pursuant to Policy ¶ 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum
Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register
of the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof.”); see
also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between Complainant’s mark and the content advertised on
Respondent’s website was obvious, Respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sleepcountrycanada.com> domain name be TRANSFERRED
from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: March 16, 2005
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