DECISION

 

Slumberland, Inc. v. Guo Qing Bing

Claim Number: FA2402002082086

 

PARTIES

Complainant is Slumberland, Inc. ("Complainant"), represented by James Wahl of Lathrop GPM, LLP, Minnesota, USA. Respondent is Guo Qing Bing ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <slumberlandfurnitures.com>, registered with DNSPod, Inc.

 

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on February 1, 2024; Forum received payment on February 1, 2024.

 

On February 4, 2024, DNSPod, Inc. confirmed by e-mail to Forum that the <slumberlandfurnitures.com> domain name is registered with DNSPod, Inc. and that Respondent is the current registrant of the name. DNSPod, Inc. has verified that Respondent is bound by the DNSPod, Inc. 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 February 7, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of February 27, 2024 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@slumberlandfurnitures.com. Also on February 7, 2024, the Chinese and English 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.

 

Having received no response from Respondent, Forum transmitted to the parties a Notification of Respondent Default in Chinese and English.

 

On February 28, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:

 

"Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English."  

 

Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. It stated that the domain name 'contains the English word "furniture" written in Roman script' (in fact, "furnitures", an ungrammatical pluralization often made by non-English speakers and a submission not particularly convincing of a facility in the English language) but also that all content at the website resolving from the disputed domain name is in English. In particular, the "Shipping Info" section of the resolving website makes a claim to "[o]perating since 1930 from headquarters in Oakdale, Minnesota, a suburb of Saint Paul Minnesota."

 

The Panel considers that assembly of the resolving website required at least some understanding of English and so the Panel determines, pursuant to Rule 11(a), that the proceedings should be conducted in English (see for example, Zappos.com, Inc. v. Zufu aka Huahaotrade, Case No. D2008-1191 (WIPO October 15, 2008) holding that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English").

 

PARTIES' CONTENTIONS

A.       Complainant

Complainant asserts trademark rights in SLUMBERLAND and SLUMBERLAND FURNITURE.  Complainant holds national registrations for those trademarks.  Complainant submits that the disputed domain name is confusingly similar to its trademarks.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant alleges that Respondent registered and used the disputed domain name in bad faith.

 

B.       Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant sells furniture and mattresses both online and through actual stores;

2.       Complainant is the owner of Slumberland Furniture, a retailer of consumer furniture and mattresses with brick-and-mortar stores across the United States;

3.       Complainant is also the owner of United States Patent & Trademark Office ("USPTO") Reg. No. 2247003, from May 25, 1999, for SLUMBERLAND FURNITURE; and

4.       the disputed domain name was registered on December 22, 2023, and resolves to an online store that offers furniture for sale be reference to the trademarks SLUMBERLAND and SLUMBERLAND FURNITURE.

 

DISCUSSION

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.

 

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights in the trademark SLUMBERLAND FURNITURE since it provides proof of registration with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, the gTLD, ".com" can be disregarded (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA1106369 (Forum Dec. 31, 2007)). The disputed domain name then differs from the trademark by simple addition of the descriptive but obviously misspelt word, "furnitures". The Panel finds that the domain name is confusingly similar to the trademark (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA1782013 (Forum June 4, 2018) finding that "[w]here a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element."; PEARSON PLC and NCS PEARSON, INC. v. Leonard Nicky, FA2401002081691 (Forum February 28, 2024) finding <pearsonsvue.org> confusingly similar to complainant's PEARSON VUE trademark).

 

The Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(i)                      before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii)                      you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

 

(iii)                      you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own. Respondent's website offers furniture for sale and bears Complainant's trademark and is engineered to create the false impression of being Complainant's own website.

 

A prima facie case has been made and so the onus shifts to Respondent (see, for example, Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) finding that a Respondent passing itself off as Complainant or Complainant's affiliate is not sufficient for bona fide commercial use).

 

In the absence of a Response, the Panel finds that Respondent has not discharged that onus and finds the Respondent has no rights or interests. Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or acquired the domain name 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website 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 the respondent's website or location or of a product or service on the site or location.'

 

The Panel finds that Respondent's conduct falls under paragraph 4(b)(iv) above. The domain name is confusingly similar to the trademark and suggests to internet users that Respondent either is, or is affiliated with, Complainant. The resolving website clearly exists for commercial gain. In terms of the Policy, the Panel finds that Respondent has used the disputed domain name to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of that website (see, for example, Charter Communications Holding Company, LLC v. Webdesk Two, FA 1808001800636 (Forum Sept. 5, 2018) finding bad faith in registration of <spectrumpack.com> because "[u]se of a domain name to create a false impression of affiliation with a complainant in order to compete with and disrupt the complainant's business is behavior indicative of bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv).").

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

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 <slumberlandfurnitures.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Debrett G. Lyons, Panelist

February 28, 2024