WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Dial-A-Mattress Operating Corp. v Ultimate Search

Case No. D2001-0764

 

1. The Parties

The Complainant in this administrative proceeding is Dial-A-Mattress Operating Corporation, a New York Corporation with its principal place of business in Long Island City, New York.

The Respondent in this administrative proceeding is Ultimate Search , GPO Box 7862, Central, Hong Kong.

 

2. The Domain Name and Registrar

This dispute concerns the domain name <matress.com>, hereinafter the Domain Name.

The Registrar with which the domain name is registered is Bulkregister.com, Inc.

The Domain Name was registered on February 21, 2001.

 

3. Procedural History

A complaint pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") both of which are implemented by ICANN on October 24, 1999, was received by the Center in electronic format on June 8, 2001, and in hardcopy on June 11, 2001. Payment in the required amount to the Center has been made by the Complainant.

On June 12, 2001, a request for registrar verification was sent to the Registrar requesting confirmation that it had received a copy of the complaint from the Complainant, that the Domain Name was currently registered with it and that the Policy was in effect, and requesting full details of the holder of the Domain Name and advice as to the current status of the Domain Name.

On June 21, 2001, the administrative proceeding began.

On July 13, 2001, a response was received from the Respondent.

On July 23, 2001, the Complainant filed a Reply to the Respondentís Response.

On July 24, 2001, the Respondent filed a Supplemental Response.

On, August 17, 2001, notification of appointment of the Administrative Panel and projected decision date ("the appointment notification") was sent to the Complainant and the Respondent. In accordance with the Respondent's request, the appointment notification informed the parties that the administrative Panel would be comprised of three Panelists, and advised that the decision should be forwarded to the Center by August 31, 2001.

On September 3, 2001, the parties were informed that the projected decision date had been extended to September 14, 2001.

 

4. Factual Background

The facts in this case are relatively straight-forward and much are not in dispute.

The Complainant is the owner of a United States Service Mark, Registration Number 1,728,356, which is "1-800-MATTRES, AND LEAVE OFF THE LAST S THATíS THE S FOR SAVINGS" and the United States Trademark, Registration Number 1,589,453 which is "(---)MATTRES" which can be used for any area code and all of these marks are used for retail outlet services and retail direct sale of mattress, bedding products, furniture and related items. Also included is the official PTO notice of recordation of assignment showing that the Service Marks and Trademarks referred to above were assigned from Dial-A-Mattress Franchise Corp. to Dial-A-Mattress Operating Corp.

The Complainant is also the applicant of U.S. TM appl. No. 75131,355 for 1-888-M-A-T-R-E-S-S. The United States Court of Appeals for the Federal Circuit reversed the decision of the Trademark Trial and Appeal Board which had rejected the application to register 1-888-M-A-T-R-E-S-S as a service mark In Re Dial-A-Mattress, Case No. 00-1197, (Fed. Cir., Feb. 13, 2001).

The Complainant also owns the domain name <mattress.com> and uses it as its primary website that is closely related to the 1-800-Mattress telephone sales operation.

Little evidence is provided as to the Complainantís use of its trademarks or domain name but the United States Court of Appeals for the Federal Circuit in In Re Dial-A-Mattress, Case No. 00-1197, (Fed. Cir., Feb. 13, 2001) appeared to accept the Complainantís use of its various trademarks as giving it common law rights through use. Accordingly, notice is taken of this finding for the purposes of our discussion below.

The Respondent operates a website at matress.com, which provides advertiser referral links to vendors of mattresses and mattress-related products.

 

5. Partiesí Contentions

A. Complainant

The Complainant has been using the toll free phone number 1-800-Mattres for its business since 1988. It is asserted that the Respondent is using the toll free phone numbers 1-888-Matress and 1-800-Matress since customers sometimes misdial or are uncertain as to the correct spelling of the word "mattress". The Complainant claims that the public associates these phone numbers and distinctive spellings of the word "mattress"with Complainant.

When a consumer types the domain name matress.com, he or she is directed to a website which states "Top sites for MATTRESS". The Complaninat submits that there is a strong likelihood that a consumer who accesses matress.com will be confused as to the source responsible for the website and will believe it to be the Complainant, since the primary function of this site is to enable mattress purchases. Accordingly, it is submitted that it is quite likely that because a customer originally dialed 1-800-matress to reach the Complainant via phone, he or she will mistype the word "mattress" or intentionally leave off a "t", and thus find themselves on the Respondentís website, believing it to be associated with Dial-A-Mattress.

The Complainant claims the Respondent is engaged in unfair competition by its registration of the Domain Name because by choosing the Domain Name, the Respondent is passing off/ palming off its website as that of Complainantís. The Complainant contends that the Respondentís intention is to take advantage of both mispellings and mistypings on the part of internet users as well as the familiarity the public has with the 1-800-MATRESS and 1-888-MATRESS numbers.

Further, it is contended that once users unintentionally get to the matress.com website, they are presented with a variety of ways to purchase mattresses. Therefore in all likelihood, the Respondent is causing the Complainant to lose Internet sales.

The Complainant also contends that the Respondent is using the Domain Name for the bad faith purposes outlined in the Policy, Paragraph 4(b)(iv): by using the Domain Name, The Respondents have intentionally attempted to attract for commercial gain, Internet users to their website or other online location, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of their web site or location or of a product or service on the web site or location.

Finally, the Complainant complains that the Respondent did not respond to any of its letters.

B. Respondent

The Respondent has filed substantial written argument. However, much of it can be reduced to a few key issues.

The Respondent notes that the Complainantís core argument is that its federal registrations of various compound terms and slogans provide the Complainant with a right to claim confusing similarity relative to any variation of the unadorned term "mattress".

The Complainantís second federal registration is for the stylized and compound mark "(- - -) M-A-T-T-R-E-S". The Respondent accepts that a compound term may indeed acquire distinctiveness in the combination of terms, but such distinctiveness does not automatically extend to the constituent parts of the combination. Nor does protection against confusion automatically accrue to the constituent parts of the combination.

The Respondent submits that the Second Circuit Court of Appeals recognized that the Complainant cannot, on the basis of its compound mark, claim an interest in the mis-spelling "MATTRES" apart from the combination with an area code designator and that the Complainant does not have a protectible interest in the underlying generic term "mattress" or mis-spellings thereof. See, e.g. Dial-a-Mattress v. Page, 880 F.2d 675 (2d Cir., 1989): " Nor would protection be available if the word was used for these purposes with a spelling variation, such as ĎMATTRESí, that did not change the generic significance for the buyer."

The Respondent asserts that the Complainant provides no credible reason to believe that a consumer typing the term "matress" is doing anything more than mis-spelling the generic word "mattress". Further, it submits that the Complainantís operation of a web site at mattress.com does not provide the Complainant with a trademark interest in the term "mattress". A consumer who is either correctly or wrongly spelling the word "mattress" is most likely and obviously looking for a mattress.

As to the Complainant assertion that, "Respondent also uses the toll-free telephone numbers 1-888-Mattres and 1-800-Matress..." it is said the Respondent, who is situated in Hong Kong, most assuredly does not operate such toll free telephone numbers as asserted by the Complainant in error. Additionally, the Complainantís assertion that an entity in Hong Kong, to whom any of the toll-free numbers at issue are inaccessible, must have known about the Complainantís toll free numbers, is said to be absurd on its face.

It is suggested that the legitimate rights or interests of the Respondent are established in Complainantís own evidence. The Respondent operates a website at matress.com which provides advertiser referral links to vendors of mattresses and mattress-related products. On this point, there is another distinction with the holding of WIPO D2001-0240. In that case, the majority of the Panel found that the Respondentís provision of general commercial links did not appear to establish a legitimate interest, even though the use of "mattress" in connection with the sale of products other than mattresses would ordinarily be understood to be an arbitrary and protectable use.

However, it is said that in this case, the Respondent and the Complainant both agree and admit that the Respondentís web site is primarily directed to providing links to vendors of mattresses and related products. Additionally, the Respondent provides a side-bar at the web site, which provides links to indices of retailers of products relating to household furnishings, and other household products and services, which may be of tangential interest to a mattress-seeking consumer.

It is submitted that the practice of registering generically-applicable domain names and deriving revenue from advertiser referral links from the corresponding website was affirmed as establishing a legitimate interest in Sweeps Vacuum v. Nett Corporation, WIPO Case No. D2001-0031, which involved the domain name "sweeps.com": Moreover, the Respondent was using the domain name not in the trademark sense, but in the descriptive sense, describing the types of businesses (sweepstakes related) listed on the directory page. This Respondent is entitled to do. See CRS Technology Corporation v. Condenet, Inc., NAF Case No. FA93547 (finding that where the registrant is using the domain name to communicate some aspect of the services it provides, then the first to register a domain name containing a generic or descriptive mark should prevail absent bad faith and a lack of legitimate interest).

The Complainant relies on WIPO Case No. D2001-0240 in which the domain name <mattres.com> was found to be confusingly similar to the above-quoted slogan 1-800-MATTRES, AND LEAVE OFF THE LAST S THATíS THE S FOR SAVINGS. However, the Respondent points out that in that decision, the majority of the panel found that the Complainantís slogan instructs consumers to "leave off the last S" in the word "mattress". Hence, if consumers were to do as the slogan instructs, they would arrive at the term "mattres". In the present situation, it should be clear that the Complainant does not claim trademark rights in a slogan such as "1-800-Mattress, And leave off the second T, thatís the T for trademark". There are, indeed, two Sís at the end of the disputed domain name. The second basis for the decision in in WIPO Case No. D2001-0240 was that the domain name <mattres.com> was not being used solely for the sale of mattresses.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

- The Domain Name is identical or confusingly similar to the trade mark; and

- The Respondent has no right or legitimate interest in respect of the Domain Name; and

- The Domain Name has been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

Domain Name Identical to or Confusingly Similar

The Panel accepts that the 1-800-MATTRES, AND LEAVE OFF THE LAST S THATíS THE S FOR SAVINGS mark is prima facie memorable and has been used extensively by the Complainant and that it has rights in this name/mark. The Panel also accepts that the Complainant has used the MATTRES mark with other identifying features and that it may have specific rights, but limited to these names/marks. Having said this, the word " mattress" is a common English word that is a highly appropriate if not necessary descriptive term for mattresses and accessories for mattresses.

It is common ground that the Complainantís second federal registration is for the stylized and compound mark "(- - -) M-A-T-T-R-E-S". The Respondent accepts that a compound term may indeed acquire distinctiveness in the combination of terms However, it submits that such distinctiveness does not automatically extend to the constituent parts of the combination. Nor does protection against confusion automatically accrue to the constituent parts of the combination. This submission has merit.

The Respondent also submits that the Second Circuit Court of Appeals in In Re Dial-A-Mattress, 240 F.3d 1341 (Fed. Cir. 2001) recognized that the Complainant cannot, on the basis of its compound mark, claim an interest in the mis-spelling "MATTRES" apart from the combination with an area code designator and that the Complainant does not have a protectible interest in the underlying generic term "mattress" or mis-spellings thereof. See, e.g. Dial-a-Mattress v. Page, 880 F.2d 675 (2d Cir., 1989): " Nor would protection be available if the word was used for these purposes with a spelling variation, such as ĎMATTRESí, that did not change the generic significance for the buyer."

Further, the Respondent submits that the Complainantís operation of a web site at <mattress.com> does not provide the Complainant with a trademark interest in the term "mattress". We agree that that submission has some merit in this particular case.

In the Panelís view, the Complainant in essence is claiming rights to an obvious misspelling of "mattress". Our view is that the Domain name and other variants are all legally equivalent to the generic term "mattress". Notwithstanding registration of various trademarks (the validity of which is not for us to comment on) we are of the view that they should, at least, be limited to their facts rather than extended to similar marks, e.g. "mattres.com" and "matress.com".

We would distinguish the case cited by the Complainant, Dial-A-Mattress Operating Corp. v. Noname.com, Inc., Case No. D2001-0240, and on which two of the present panel sat. That case involved the domain name <mattres.com>, which was registered by a U.S. resident. In the case cited the majority found that the respondent was intentionally creating confusion with the complainant's mark 1-800-MATTRESS, AND LEAVE OF THE S THAT'S S FOR SAVINGS" and the well known promotional slogans 1-800 MATTRESS LEAVE OFF THE LAST S FOR SAVINGS, which was featured on the web site and is a memorable commercial jingle. It is also distinguishable, in that the registrant in the prior case used the domain name at issue to resolve to a web site where a variety of retailers sold a variety of products, including mattresses.

In the present case, it seems the Complainant is attempting to prevent use of a variation of a common descriptive term. The Respondent has registered <matress.com>, but is not trading on confusion with the above referenced mark, and is using the mark to sell mattresses only.

Accordingly, we find that the Domain Name is not identical or confusingly similar to a trademark in which the complainant has rights (refer para 4 (a) (i) of the Policy Ė with emphasis added). For these reasons we find for the Respondent on this ground

No Right or Legitimate Interest

As various courts in many jurisdictions have said, special care has to be exercised where one party attempts to acquire exclusive rights in eloquently descriptive words and phrases. In refusing to transfer the domain name <nudescape.com> it was noted:

"The question has to be answered to some extent by asking whether the Respondent has the right to use the words "nude" and "scape" to describe its pornographic services. That is, quite apart from whether the Complainant may have rights in these or similar words. It seems to the Panel that there is a reasonably good argument that the Respondent should have a right to use these common English words to describe its pornographic services. Otherwise, parts of the English language would soon be acquired and removed from common use by those wishing to name their businesses or describe their services."

America Online Inc. v. Media Dial Communications - Case No. D2001-0799

We accept that a consumer who is either correctly or wrongly spelling the word "mattress" is most likely and obviously looking for a mattress and that the Respondent should not be unfairly hindered from running a web site directed to the sale of mattresses or the supply of information relating thereto. That is under, the Domain Name.

For these reasons we also find for the Respondent on this ground

Domain Name Registered and Being Used in Bad Faith

Given the comments made above we find for the Respondent on this ground.

 

7. Decision

The complaint is dismissed.

 


 

Clive L. Elliott
Presiding Panelist

David Sorkin
Panelist

M. Scott Donahey
Panelist

Dated: September 26, 2001