Dan Foam A/S v. Michael Rankin
Claim Number: FA0512000612826
Complainant is Dan Foam A/S (“Complainant”), represented by Katherine W. Schill, of Michael Best & Friedrich LLP, 100 East Wisconsin Avenue, Suite 3300, Milwaukee, WI 53202-4108. Respondent is Michael Rankin (“Respondent”), 6780 Abrams Rd., Ste. 103-pmb 139, Dallas, TX 75231.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <temperpedic.net> and <temper-pedic.net>, registered with Go Daddy Software, 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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2005.
On December 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <temperpedic.net> and <temper-pedic.net> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 January 6, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 26, 2006 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@temperpedic.net and postmaster@temper-pedic.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <temperpedic.net> and <temper-pedic.net> domain names are confusingly similar to Complainant’s TEMPUR-PEDIC mark.
2. Respondent does not have any rights or legitimate interests in the <temperpedic.net> and <temper-pedic.net> domain names.
3. Respondent registered and used the <temperpedic.net> and <temper-pedic.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Dan Foam A/S, holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the TEMPUR-PEDIC mark (Reg. No. 1,853,088 issued September 6, 1994) in connection with mattresses, cushions and furniture pads made of elastic viscous foam.
Respondent registered the <temperpedic.net> domain name on July 2, 2003, and the <temper-pedic.net> domain name on July 3, 2003. Respondent is using the disputed domain names to redirect Internet users to Respondent’s commercial websites that feature various commercial products and services, including some of Complainant’s products.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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 TEMPUR-PEDIC mark
through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P.
Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the USPTO creates a presumption of rights in a
mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
Respondent’s
<temperpedic.net> and <temper-pedic.net>
domain names are
confusingly similar to Complainant’s TEMPUR-PEDIC mark because Respondent’s domain
names incorporate Complainant’s mark, omit a hyphen, substitute the letter “e”
in “temper” with the letter “u,” and add the generic top-level domain “.net.” The Panel finds that such minor changes and
additions to Complainant’s registered mark do not negate the confusingly
similar aspects of Respondent’s domain names pursuant to Policy ¶ 4(a)(i). See Chernow
Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that
the use or absence of punctuation marks, such as hyphens, does not alter the
fact that a name is identical to a mark"); see also Belkin Components
v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”); see also Toronto-Dominion Bank v. Karpachev,
D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names
<tdwatergouse.com> and <dwaterhouse.com> are virtually identical to
the complainant’s TD WATERHOUSE name and mark); see also Nev. State Bank v.
Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003)
(“It has been established that the addition of a generic top-level domain is
irrelevant when considering whether a domain name is identical or confusingly
similar under the Policy.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <temperpedic.net> and <temper-pedic.net> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Due to Respondent’s failure to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain names. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent has offered no evidence and there is no evidence in the record suggesting that Respondent is commonly known by the <temperpedic.net> or <temper-pedic.net> domain name. Thus, Respondent has not established rights or legitimate interests in the <temperpedic.net> and <temper-pedic.net> domain names pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent was not commonly known by the disputed domain name nor was the respondent using the domain name in connection with a legitimate or fair use).
Moreover, Respondent is using the disputed domain names to
redirect Internet users to Respondent’s commercial websites that feature
various commercial products and services, including some of Complainant’s
products. Respondent’s use of domain
names that are confusingly similar to Complainant’s TEMPUR-PEDIC mark to
redirect Internet users interested in Complainant’s products and services to
websites that feature various commercial products and services, as well as
Complainant’s products, 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 of the domain names pursuant to Policy ¶ 4(c)(iii). See Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods
or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern,
D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the
complainant’s goods without the complainant’s authority, as well as others’
goods, is not bona fide use); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001)
(finding that use of the complainant’s mark to sell the complainant’s perfume,
as well as other brands of perfume, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered a domain name that incorporates Complainant’s TEMPUR-PEDIC mark for Respondent’s commercial gain. Respondent registered and used the <temperpedic.net> and <temper-pedic.net> domain names in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent intentionally attempted to attract potential customers to its websites by taking advantage of Internet users who are searching under Complainant’s TEMPUR-PEDIC mark and diverting them to Respondent’s commercial websites. See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products); see also World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <temperpedic.net> and <temper-pedic.net> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: February 15, 2006
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