Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc.
Claim Number: FA2005001895951
Complainant is Hästens Sängar AB (“Complainant”), represented by David L. May of Nixon Peabody LLP, District of Columbia, USA. Respondent is Jeff Bader / Organic Mattresses, Inc. (“Respondent”), represented by Stephanie Vazquez of Allen, Dyer, Doppelt + Gilchrist, PA, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <comparetohastens.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 H. Bernstein as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 12, 2020; the Forum received payment on May 12, 2020.
On May 13, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <comparetohastens.com> domain name is 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 May 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2020 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 email@example.com. Also on May 19, 2020, the 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.
In light of the COVID-19 pandemic, Respondent requested and was granted an extension of time for filing its Response. A timely Response was received and determined to be complete on June 29, 2020.
On July 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David H. Bernstein 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 "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.
Pursuant to the Forum’s Supplemental Rule 7, and consistent with paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), Complainant may submit additional documents for the Panel to consider at its discretion. On July 7, Complainant filed an Additional Submission in Support of the Complaint.
On July 20, the Panel issued a Procedural Order accepting Complainant’s Additional Submission in part. Because the Panel agreed to accept Complainant’s supplemental submission in part, the Panel held in its procedural order that Respondent should be granted an opportunity to respond to Complainant’s supplemental submission. See paragraph 10(b) of the Rules (the Panel shall treat the parties “with equality”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Decision Overview 3.0”), paragraphs 4.6 & 4.7 (“Depending on the content of any admitted supplemental filing, the panel may issue further instructions to the parties, including a rebuttal/reply opportunity to the non-initiating party.” In such circumstances, a panel may issue a procedural order “where fairness calls for an opportunity for a party to respond to certain (unforeseeable) allegations or submissions by the other party.”); see also Workman Publishing Co., Inc., Patricia Schultz v. MareBerg Consulting, WIPO Case No. D2011-0219; Pacific Fence & Wire Co. v. Pacific Fence and Jim Paradise, WIPO Case No. D2001-0237. Accordingly, the Panel granted Respondent the opportunity to file a sur-reply, limited to Complainant’s arguments in its Additional Submission that the Panel accepted.
On July 24, 2020, Respondent submitted a sur-reply.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the disputed domain name <comparetohastens.com> is confusingly similar to Complainant’s registered mark HÄSTENS because the domain name incorporates Complainant’s mark in its entirety. Complainant further asserts that the addition of the words “compare to” in the disputed domain name does not prevent a finding of confusing similarity because those words do not suffice to distinguish the disputed domain name from the registered mark.
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not known by the disputed domain name and Complainant has not authorized Respondent to use the mark. Additionally, Complainant asserts that Respondent is not utilizing the mark to make a bona fide offering of goods or a legitimate noncommercial or fair use of the disputed domain name. Complainant points to evidence that the disputed domain name resolves to a parked page containing links to competitors of Complainant.
Finally, Complainant contends that Respondent acted in bad faith by registering the disputed domain name. Complainant asserts that Respondent had actual or constructive knowledge of Complainant’s mark, and registered the domain name in order to create a misimpression of association between the site and Complainant. Complainant argues that the passive holding of a webpage, particularly where the webpage contains links to third party competitors, constitutes evidence of bad faith registration. For these reasons, Complainant asserts that Respondent acted in bad faith.
Respondent contends that the disputed domain name is not confusingly similar to Complainant’s mark because of the addition of the words “compare to.” Respondent alleges that the average user would not believe that Complainant sponsors the disputed domain name because the use of “compare to” indicates that Complainant does not own the disputed domain name. Respondent contends that this usage of the trademark constitutes nominative fair use, which weighs against a finding of confusing similarity.
Respondent further asserts that it has legitimate interests in the disputed domain name because it intends to make a bona fide offering of goods on the site. In particular, Respondent alleges that it intends to use the website to compare its goods with those of Complainant. However, Respondent states that it has delayed website development because it “has been unable to allocate the time and resources necessary to prepare and launch these websites due to delays and financial hardships presented by the COVID-19 pandemic. . . .” In support of its claim, Respondent submits evidence of additional domain names that it has registered. These domain names also include the words “compare to” followed by the brand name of a competitor. In addition, Respondent contends that its use of the mark constitutes nominative fair use under the Oki Data standard.
Finally, Respondent contends that its actions do not constitute bad faith because, as noted, it plans to develop a comparison website. Respondent urges that the length of time that elapsed from registration of the disputed domain name in February to Complainant’s filing of the case in May is insufficient to infer bad faith from the passive holding of the domain name, especially in light of the COVID-19 pandemic. Respondent asserts that it intends to develop these comparison sites “in the near future.” In addition, Respondent argues that there is insufficient evidence of bad faith in totality, because the domain name as a whole would not create the misimpression that Complainant sponsors the website.
C. Additional Submissions
The WIPO Decision Overview 3.0, Section 4.6, provides in relevant part:
Paragraph 10 of the UDRP Rules vests the panel with the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition.
Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.
Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel. . . .
[P]anels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance).
The vast majority of Complainant’s supplemental submission covers facts and arguments that were already addressed in the Complaint or that could have been reasonably anticipated (e.g., that the <comparetohastens.com> domain name is confusingly similar to Complainant’s HÄSTENS trademark, that it is not legitimate for Respondent to rely on principles of nominative fair use to register a domain name combining the phrase “compare to” with Complainant’s trademark, and that the use of pay-per-click (“PPC”) advertising links on the website to which the domain name resolves constitutes bad faith). The Panel therefore disregards those aspects of Complainant’s supplemental submission.
The one aspect of Respondent’s Response that Complainant may not have been able to anticipate is Respondent’s assertion that its registration of additional “compare to” domain names is relevant to show that it had undertaken demonstrable preparations to use the disputed domain name for a legitimate comparison website that makes a nominative fair use of the HÄSTENS trademark. Because GDPR and technical limitations on the ability to search for domain name registrations by registrant have made it difficult for complainants to identify other domain names registered by respondents, Complainant may not have been aware of those other domain names and thus was unable to address them in its Complaint.
In order to provide Complainant with a fair opportunity to respond to these new facts raised for the first time in the Response, and to Respondent’s argument that these other domain names are evidence of Respondent’s demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services, the Panel considers the portion of Complainant’s supplemental submission that addresses Respondent’s registration and use of additional “compare to” domain names, as described below.
Complainant’s Additional Submission
In the portion of Complainant’s supplemental submission that the Panel accepts, Complainant argues that (1) the registration of other “compare to” domain names does not constitute demonstrable preparations to use the disputed domain name for a legitimate purpose, and (2) the registration of those additional domain names demonstrates that Respondent has engaged in a pattern of registering domain names containing other trademarks. Complainant points out that the “compare to” domain names resolve to parked pages with links to third party websites. Furthermore, Complainant states that one of the additional “compare to” websites includes links to third party competitors.
Respondent’s Additional Submission.
Respondent contends that it did not register its ”compare to” domain names in order to obtain PPC advertising revenues. Rather, it states, the PPC links were added by the Registrar, that it has no control over the links that the Registrar included on the free parking website to which the disputed domain name resolved, and that it received no PPC revenue from any of those links. Respondent further urges that it does not intend to divert users searching for Complainant’s website to the disputed domain name involuntarily.
Respondent therefore disputes that it has registered other brand owners’ trademarks for its own commercial gain. Rather, Respondent argues, it only gains value from registration of the other “compare to” websites through launching comparison websites.
Respondent asserts that it intends to employ the disputed domain name, as well as the other “compare to” domain names that it registered, in connection with its bona fide sales of commercial products. Respondent explains that consumers can compare its commercial products with Complainant’s at in-person retail locations, and that this inspired Respondent’s registration of the disputed domain name. In a supplemental declaration, Respondent’s Chief Executive Officer Jeff Bader attests to the truth of the foregoing statements.
Respondent asserts that it would have launched a “coming soon” page if Complainant had contacted Respondent regarding its concerns prior to the filing of the Complaint. Respondent explains that it has launched “coming soon” pages for its other domain names, and attaches exhibits in support of this assertion. However, Respondent provides that it has been unable to do the same for the disputed domain name because it has been denied access to the site as a result of the instant proceeding.
Finally, Respondent included arguments about why the pandemic prevented it from launching these websites sooner. That, however, is beyond the scope of the portion of Complainant’s additional submission that the Panel agreed to accept. Because Respondent already mentioned its delay in its Response (albeit without any specificity as to how the pandemic interfered with Respondent’s ability to develop its website or even show demonstrable preparations to do so), and because it could have included this additional detail in its Response, the Panel disregards that portion of Respondent’s additional submission.
Final Comment on Additional Submissions.
The Panel notes that, even if it had considered the portion of both parties’ additional submissions that it has disregarded, it would not have changed the outcome of this proceeding.
Complainant Hästens Sänger AB manufacturers, distributes, and sells beds, matrasses, and related products in the United States and worldwide. Complainant is the owner of various registered trademarks for or containing the mark HÄSTENS, including U.S. Reg. No. 4,094,137 for beds, mattresses and other goods and services, with a filing date of October 21, 2009 and a registration date of January 31, 2012. That registration claims first use at least as early as January 31, 2000. Complainant has registered, and sells its goods through, the domain name <hastens.com>.
Respondent Organic Mattresses, Inc. (“OMI”) sells organic mattresses and bedding products. In February 2020, Respondent registered the disputed domain name <comparetohastens.com>. Concurrently, Respondent registered at least half a dozen additional domain names that similarly reference competitor companies, such as Happsy in <comparetohappsy.com>. Since February 2020, the disputed domain name has resolved to a parked page with PPC advertisements and links to third party competitors of Complainant.
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.
It is undisputed that Complainant has rights to the federally registered HÄSTENS trademark. This registration “prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP.” WIPO Decision Overview 3.0, Section 1.2.1.
Respondent’s argument that the disputed domain name is not confusingly similar to that trademark is without merit. Confusing similarity for the purposes of the Policy is assessed by “comparing the (alpha-numeric) domain name and the textual components of the relevant mark.” Id. at Section 1.10. In the instant case, the disputed domain name incorporates Complainant’s mark in its entirety. That alone is sufficient to establish confusing similarity.
Respondent nevertheless argues that the disputed domain name is not confusingly similar to Complainant’s mark because the addition of the words “compare to” prior to the HÄSTENS mark makes it clear that the domain name is not owned by Complainant, but rather is owned by another entity that is seek to compare its products to those of Complainant. That argument reflects a misunderstanding of the first prong of the Policy. Whether the domain name is likely to confuse Internet users into believing that the disputed domain name comes from or is associated with Complainant is irrelevant to the inquiry under the first prong. As explained in Section 1.7 of the WIPO Decision Overview 3.0:
It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. (This may also include recognizability by technological means such as search engine algorithms.) In some cases, such assessment may also entail a more holistic aural or phonetic comparison of the complainant’s trademark and the disputed domain name to ascertain confusing similarity.
While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. . . .
Issues such as the strength of the complainant’s mark or the respondent’s intent to provide its own legitimate offering of goods or services without trading off the complainant’s reputation, are decided under the second and third elements. Panels view the first element as a threshold test concerning a trademark owner’s standing to file a UDRP complaint, i.e., to ascertain whether there is a sufficient nexus to assess the principles captured in the second and third elements.
For these reasons, “the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.” Id. at Section 1.8.
In the instant case, the addition of the phrase “compare to” before Complainant’s trademark does not undermine a finding of confusing similarity. See, e.g., PFIP, LLC v. Rachel Payette, Forum Claim No. FA1429825 (2012) (finding confusing similarity where a disputed domain name contains complainant’s mark in its entirety, despite addition of the terms “comparison” or “compare”). Accordingly, Complainant has met its burden under the first element.
In order to prevail under this element, Complainant must first establish “a prima facie case that the respondent lacks rights or legitimate interests . . . in the domain name.” WIPO Decision Overview 3.0, Section 2.1. Complainant has alleged, and Respondent has not refuted, that Respondent is not commonly known by the disputed domain name or a related name, and that Complainant has not granted Respondent authority to use Complainant’s mark. This is sufficient to make out a prima facie case.
Consequently, “the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” Id. “If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Id.
Respondent argues that it has rights or legitimate interests in the disputed domain name for two independent reasons. First, Respondent argues that, before any notice of the dispute, Respondent made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. See Policy, ¶ 4(c)(i). Second, Respondent contends that it is making a legitimate nominative fair use of the domain name, without intent to misleadingly divert consumers or tarnish Complainant’s trademark. See id., ¶ 4(c)(iii). In support of these allegations, Respondent offers the declaration of Jeff Bader and the records of its registration of similar “compare to” domain names.
A “compare to” domain name might be legitimate if it is used, or is intended for use, for an authentic, non-confusing comparison website. But proving that a “compare to” website is legitimate requires proof. Such proof is lacking in this case.
Respondent asserts that it is employing the domain name so that it can make a bona fide offering of services. Respondent concedes that it has not posted any content at the website, but states that it intends to do so. It contends that it has not yet done so because of delays and financial hardship caused by the COVID-19 pandemic.
Although the Panel is sympathetic to Respondent’s report that the pandemic has interfered with its plans to launch a comparison website, the Policy already provides a mechanism for showing rights or legitimate interests before a Respondent is able to execute on its intentions (regardless of the reasons for the delay). Under ¶ 4(c) of the Policy, a respondent can demonstrate rights or legitimate interests if it has made “demonstrable preparations to use, the domain name.” Such preparations might include things like having developed a business plan for use of the website, or having interviewed or hired a website designer for the website, or having interviewed or hired a programmer to code the planned website, or having an outline of the expected content of the website. See generally WIPO Decision Overview 3.0 at Section 2.2; see also Asbach GmbH v. Econsult Ltd., d.b.a. Asbach Communities and Whois-Privacy Services, WIPO Case No. D2012-1225 (finding demonstrable preparations satisfied where Respondent submitted evidence of a joint venture agreement, despite providing “no evidence that it ha[d] commenced this business”).
To show rights or legitimate interests, those preparations must be “demonstrable.” See Harpo, Inc. and Oprah’s Farm, LLC v. Robert McDaniel, WIPO Case No. D2013-0585 (finding Respondent had no rights or legitimate interests where Respondent “asserted an intention to use” the disputed domain name, but the website resolved to pay-per-click ads and Respondent offered “no supporting evidence of ‘demonstrable preparations’”). That means they require evidence showing that they were in progress. Mere intentions are not enough. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (“Mere assertions of preparations to make a legitimate use are not enough. . . . In these circumstances, the failure to present any credible evidence of demonstrable preparations to offer auction services is fatal to Respondent’s claim of a legitimate interest in the domain names.”).
Respondent’s registration of other “compare to” domain names is also insufficient to establish demonstrable preparations. As the WIPO Decision Overview 3.0 explains, “bona fide registration and use of related domain names” may point to a lack of cybersquatting intent. Section 2.2. However, Respondent has not used these related domain names to compare their products with other brands. Instead, these domain names, like the disputed domain name, are populated with PPC advertisements. If those other websites had legitimate content comparing Respondent’s products to those of the other brand owners whose marks are reflected in the other domain names, that may well have been compelling evidence, but there is no such evidence in this case (nor has Respondent submitted evidence that it has made demonstrable preparations to launch comparison websites with respect to those other domain names).
To the extent that the COVID-19 pandemic impacted Respondent’s ability to provide proof of its demonstrable preparations, the Panel might have taken this into account had Respondent included relevant factual evidence (instead of mere conclusory allegations). For example, it might be that Respondent could not produce certain documents because it did not have access to its offices, or that it had to furlough employees who were planning to work on the comparison websites, or that it had to cut its budget for hiring new employees to create these websites. The Panel need not decide whether such factors would have been sufficient to overcome the need to show demonstrable preparations because Respondent has provided no specificity as to why or how COVID-19 has interfered with its plans to launch a comparison website.
In the alternative, Respondent alleges that it has rights or legitimate interests in the domain name because it is utilizing the domain name in a manner authorized as nominative fair use. Once again, although a “compare to” website might be legitimate if it is in fact being used in a nominative fair use way, Respondent has not submitted facts that substantiate that it is using the domain name in this way.
For the foregoing reasons, the Panel finds that Complainant has satisfied its burden with respect to the second element.
The disputed domain name resolves to a website with PPC links, including links to third party competitors of Complainant. The presence of PPC advertisements and links to Complainant’s competitors has long been acknowledged as evidence of bad faith use. Id. at Section 3.1.1; Section 3.5. See also, Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143.
Respondent tries to dismiss its use of PPC links by stating that it did not place the PPC links on the website to which the disputed domain name resolves, and that it has not profited from those links. But that does not excuse the harm that such links cause to Complainant. Moreover, it ignores the fact that it was entirely within Respondent’s control to suppress these links. For these reasons, panels routinely conclude that the presence of PPC links related to the complainant’s trademark, even if generated by automated technology, and even if placed by the Registrar on a free parking page, is evidence of bad faith use. As explained in Section 3.5 of the WIPO Decision Overview 3.0:
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
If Respondent intended to produce a legitimate comparison website, it should have disabled PPC links when it registered the disputed domain name. Because it did not do so, the Panel finds that Respondent has used the disputed domain name in bad faith.
But, a showing of bad faith use is not enough. To satisfy the third prong of the Policy, Complainant also bears the burden of proving that Respondent registered the disputed domain in bad faith.
Whether Respondent engaged in bad faith registration requires consideration of Respondent’s intent. Respondent asserts that it registered the domain name in order to establish a comparison website, which, as noted above, could be a permissible use of the disputed domain name. Although Respondent did not come forward with affirmative evidence to establish demonstrable preparations to create such a website (which is a specific requirement under the policy for establishing rights or legitimate interests in a domain name), a finding a bad faith requires more. It is not enough that Complainant show that Respondent failed to come forward with evidence of its demonstrable preparations; rather, Complainant must come forward with evidence the establishes, by a preponderance of the evidence, that Respondent in fact registered the disputed domain name with a bad faith intention to cybersquat on the domain name. Such evidence might include evidence of an intent to sell the disputed domain name to Complainant for a profit, to prevent Complainant from reflecting its own trademark in a corresponding domain name, to disrupt Complainant’s business, or to attract consumers to the website to which the domain name resolves by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. See generally Policy ¶ 4(b).
Complainant has not submitted sufficient evidence to establish any of these examples of bad faith registration, or any other basis for a conclusion that the disputed domain name was registered in bad faith. To the contrary, Respondent has provided sworn declarations of its CEO, Jeff Bader, who attests that Respondent registered the disputed domain name in order to establish a comparison website. Although Mr. Bader’s testimonial evidence (which was not accompanied by any documentary support) was insufficient to meet the Policy’s requirement of showing “demonstrable preparations,” the Panel does find the statements credible with respect to Respondent’s intent at the time of registration.
It is true that such a comparison website, if launched, may attract consumers to it. But, if the website is properly designed, it likely would not cause confusion as to source, sponsorship or affiliation; rather, it should be clear that the website does not come from Complainant but rather from a competitor of Complainant. It also is true that such a comparison website might be designed to divert business from Complainant to Respondent, but that is not the kind of disruption of a competitor’s business contemplated by the Policy as evidence of bad faith registration and use.
Therefore, the Panel concludes that Complainant has not established that Respondent registered and used the disputed domain name in bad faith.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <comparetohastens.com> domain name shall REMAIN WITH Respondent.
David H. Bernstein, Panelist
Dated: July 31, 2020
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