WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Advanced Comfort Inc. v. Frank Grillo

Case No. D2002-0762

 

1. The Parties

The Complainant in this proceeding is Advanced Comfort Inc. (the "Complainant"), a company incorporated under the laws of New York, with its main address at 10 Stage Door Road, Fishkill, New York 12524, U.S.A. Complainantís authorized representatives are Jeff M. Collen and Matthew C. Wagner, Collen IP, Holyoke-Manhattan Building, Ossining, New York 10562, U.S.A.

The Respondent in this proceeding is Frank Grillo (the "Respondent"), an individual with a mailing address, as per the WHOIS database, at 9 Highland, New York 12528, U.S.A. Complainant was able to make contact with Respondent at 9 Sunnybrook Ave. Cr., Highland, NY 12528, and by email at "mattress@ulster.net."

 

2. The Domain Name and Registrar

The domain name at issue is <abeds.com>.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999, (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules") of the WIPO Arbitration and Mediation Center (the "Center").

The Complainant submitted its complaint to the Center on August 15, 2002, by e-mail and on August 19, 2002, in hardcopy. The Center requested registration verification details from the Registrar on August 15, 2002. On that same date, the Registrar confirmed that the Domain Name was registered to Respondent, that the Domain Name is subject to the Policy and that the Domain Name is currently active. On August 20, 2002, the Center informed Complainant of a deficiency in its complaint. On the same date, Complainant responded with an amendment to its complaint via e-mail, and followed up with a hardcopy of the amendment on August 26, 2002. On August 28, 2002, the Center notified the Respondent that a complaint had been filed against it and set the date for response to be September 17, 2002. No response was received from the Respondent, and the Center notified the Respondent of its default on September 19, 2002. On October 1, 2002, the Center transmitted the complete file to Mr. Arif Ali (the "Panelist"), setting the date for decision as October 15, 2002. This date was, thereafter, extended by the Panelist to October 25, 2002.

 

4. Factual Background

This case presents the following few facts. Complainant is the owner of two service marks to the term ABED.COM, both registered with the United States Patent and Trademark Office for a variety of products and services related to beds and bedding materials. Complainantís registrations to U.S. Registration No. 2463230 and U.S. Registration No. 2542400 are valid U.S. registrations and have been effective since June 26, 2001, and February 26, 2002, respectively. Complainant also has a domain name registration for <abed.com> and has had this registration since June 3, 1996. The website <abed.com> resolves to a website that features bed and bedding products and services.

The WHOIS database reflects that Respondent is an individual named Frank Grillo. Mr. Grillo registered the Domain Name on August 1, 2001. Currently the Domain Name <abeds.com> does not resolve to any active website.

 

5. Partiesí Contentions

A. The Complainant

Complainant first contends that it has rights in the term "abeds.com" by virtue of its federal registrations to the mark ABED.COM. Complainant asserts that Respondentís registration of the domain name <abeds.com> is almost identical to Complainantís federally registered trademark ABED.COM because adding an "s" to the end of the trademark of another does not prevent it from being confusingly similar.

Complainant then contends that Respondent neither has rights nor legitimate interests in respect to the domain name <abeds.com>. Complainant argues that there is no evidence of Respondentís prior use in commerce or otherwise of <abeds.com>, or any similar mark or domain name. Complainant alleges that Respondentís use of <abeds.com> does not constitute fair use of the mark ABEDS.COM and that there is no evidence of any use, registration, or any other rights the Respondent may have in marks such as ABED or ABEDS, or ABEDS.COM.

Finally, Complainant contends that the domain name <abeds.com> was registered and is being used in bad faith because the circumstances of this case indicate that the Domain Name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of Respondentís out-of-pocket costs directly related to the Domain Name. Complainant states that Respondent verbally represented to Complainant that the only reason he registered the domain name <abeds.com> was to trade it for several of Complainantís registered domain names. Complainant asserts that Respondent is in a similar business as Complainant and is actually a former employee of Complainant. Complainantís position is that Respondent was aware of Complainantís federally registered trademarks and that the only purpose in registering the Domain Name was for the purpose of extorting Complainant.

Complainant requests that the Domain Name be transferred to Complainant.

B. The Respondent

Respondent did not submit a response.

 

6. Discussions and Findings

As a preliminary matter, the Panelist finds that the Centerís formalities compliance review was performed correctly and that the Respondent had proper notice of this administrative proceeding.

Paragraph 15(a) of the Rules provides the following instructions: "A Panel shall decide the complaint based 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 seems applicable." The Panelist has elected to consider the Supplement to the Complaint as it was only submitted to correct the name of the Domain Name Registrar. As the Respondent did not submit a response, the Panelist will render its decision based wholly on the complaint and prior WIPO decisions.

The Panel further notes the guidance provided in paragraph 14(b) of the Rules: "If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement, of these Rules or any requests from the Panel, the Panel should draw such inferences therefrom that it considers appropriate."

Paragraph 4(a) of the Policy directs that the burden is on the Complainant to establish each of the following elements:

(i) That the Respondentís Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) That Respondent has no rights or legitimate interest in respect to the Domain Name; and

(iii) That Respondentís Domain Name has been registered and used in bad faith.

Each of these elements is discussed below.

A. Similarity of Complainantís trademarks and Respondentís Domain Name

The Panelist finds that Complainant has established that it has rights in the service mark, ABED.COM. The only distinction between Complainantís registered service mark and the domain name in dispute, <abeds.com> is the addition of the letter "s." It is well established that the addition of a term does not necessarily prevent a finding of confusing similarity. See, for example, National Hockey League and Lemieux Group LP v. Domain Name For Sale, WIPO Case No. D2001-1185 (December 6, 2001) (adding the word "penguin" to complainantís mark "NHL" did not avoid a finding of confusing similarity). Particularly, as in here, where the only difference between the Complainantís mark and the domain name in dispute is the letter "s", there is no question that the Domain Name is confusingly similar to the Complainantís registered mark.

The Complainant, therefore, prevails, on element (i).

B. Respondentís Rights or Legitimate Interests in the Domain Name

The next inquiry is whether the Respondent has any rights or a legitimate interest in the Domain Name. The Respondent is Mr. Frank Grillo; he operates a website at www.affordablemattress.com. The Domain Name does not reflect the name, corporate identity or, self-evidently, the business of the Respondent. There is nothing to show that Respondent is commonly known by the Domain Name. Respondent does not appear to have any rights to any trade names or trademarks consisting in whole or in part of the mark ABED or ABEDS. Further, the Panelist accepts the Complainantís position that Respondent has neither been licensed or otherwise permitted to use the mark ABED.COM.

Other factors that may be used to establish that a respondent has a legitimate interest in a domain name include a respondent making a legitimate or non-commercial fair use of a domain name or a respondent using or preparing to use a domain name in connection with a bona fide offering of goods or services. See Paragraph 4(c) of the Policy.

The <abeds.com> domain name does not resolve to an active website. Consequently, Respondent does not appear to be making a bona fide offering of goods or services or using the Domain Name for legitimate or non-commercial fair use purposes. Likewise, there is no suggestion that Respondent is making, or has made, any preparations to use the Domain Name.

The Panel is aware that the Complainant has the burden of proving that the Respondent has neither rights nor a legitimate interest in the Domain Name. Complainant, however, can only go so far in meeting this burden. It is inevitable that there are circumstances in which a Complainant is unaware of a Respondentís activities and, in good faith, urges that the Respondent does not have any legitimate interest in the disputed domain name when indeed the Respondent may very well have a legitimate interest. See, for example, The Boots Company Plc v. Challenge Services, Inc. WIPO Case No. DBIZ2002-00096 (June 18, 2002).

In the circumstance of this case, this Panelist believes that it is perfectly reasonable to shift the onus of showing a legitimate interest in the Domain Name to the Respondent, particularly in view of the fact that (i) Complainant has reasonably and in good faith alleged that the Respondent does not have rights or a legitimate interest in respect of the Domain Name; (ii) the Domain Name is confusingly similar to Complainantís trade or service marks; (iii) the Respondent is engaged in a competing or similar business; and (iv) the Respondent failed to submit a response. This shifting is especially reasonable considering that prior decisions have held that the respondent need only show a plausible, non-infringing explanation for selecting the disputed domain name. Webvan Group, Inc. Stan Atwood, WIPO Case No. D2000-1512 (February 20, 2001); Pfizer Inc. v. Myviagra/Wilbert Smith, WIPO Case No. D2002-0463 (July 25, 2002).

As the Respondent here has elected not to provide any explanation which would support a finding of legitimate use, the Panelist finds for the Complainant on element (ii).

C. Bad Faith Registration

Finally, the Panelist must consider whether there was an element of bad faith involved in the registration and use of the of the Domain Name.

It appears to the Panelist that there are two available approaches to dealing with the issue of bad faith under the facts presented here, and each yields a different result. There are two competing interests that must be considered. In the first instance, there is the Policyís requirements that the Complainant bear the burden of proving each of the elements set out in the Policy, including that of bad faith. Complainant contends that the Respondent showed bad faith by registering the Domain Name primarily to sell it for an excessive amount and to extort the Complainant. The Panelist agrees that this situation would indeed demonstrate bad faith on the part of the Respondent. However, Complainant has offered absolutely no evidence to support his contention other than a bald assertion in its Complaint. The conclusory and self-serving statements by Complainant, without more, are not sufficient to support a finding of bad faith.

Having said that, a review of a prior WIPO decisions reveals that a significant number of decisions are predicated on the notion that the passive holding of a domain name, without putting it to any use, when considered in conjunction with the other circumstances of the case may support a finding of bad faith. See CBS Broadcasting Inc. vs. Edward Enterprises, WIPO Case No. D2000-0242 (May 24, 2000) for a partial listing of those decisions in 2000. It was the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) decision that first put forth the principle that there does not always have to be a positive action of bad faith, such as redirection or offers to sell, in order to support a finding of bad faith. Here, under the Telstra approach, the Panelist would find for the Complainant on the element of bad faith. This is so for the following reasons:

1. The Respondent registered the domain name <abeds.com> in August of 2001 and to date there is no evidence that the Domain Name has ever been used for any purpose. At the present time, the Domain Name does not resolve to an active website.

2. As pointed out by Complainant, the Respondent is also the registered owner of the domain name <affordablemattress.com>. This domain name resolves to a web-site which confirms that the Respondent is in a competing business, offering mattresses for sale. It is the view of this Panelist that when a competitor holds on to a confusingly similar domain name, this can be reasonably considered (absent any contrary explanation from the Respondent) to be a disruption of the Complainantís business as envisioned in Paragraph 4(b)(iii) of the Policy. Other decisions support a finding of bad faith under similar facts. For example, in Express Messenger Systems, Inc. Golden State Overnight, WIPO Case No. D2001-0063 (March 26, 2001), the Panelist noted:

"Respondent registered and has used the disputed domain name [ ] by effectively rendering it inactive, such that an Internet user entering that name in a web browser will find that it is not associated with the Complainantís business. Because Respondent and Complainant are competitors in the same market, the Panel determines that Respondent registered and has used the name [ ] for the purpose of disrupting Complainantís business within the meaning of paragraph 4(b)(iii) of the Policy."

3. Complainant contends that the Respondent is a former employee of the Complainant, but the Panelist affords this no weight as no evidence is offered on this point. Nevertheless, the Panelist finds it highly unlikely that the Respondent was unaware of the Complainantís mark and the goods sold under the mark as both the Complainant and Respondent have their business addresses in New York and both offer the same general goods and services. See Pivotal Corporation v. Discovery Street Trading Co. Ltd., WIPO Case No. D2000-0648 (August 14, 2000) (finding bad faith in part because respondent must have had knowledge of complainant and mark at the time of registration since both parties resided in the same city in Canada).

4. Respondent did not provide a street address when he registered the Domain Name and he failed to update his e-mail address.

5. Respondent failed to offer any explanation regarding his good faith use of the Domain Name.

The Panelist is not concerned that taking this approach to resolving domain name disputes will be unduly unfair to respondents. A respondent is given information on what is alleged by a given complainant and has every opportunity to respond and refute any information that is inaccurate or incomplete. The UDRP process remains highly favorable to a respondent that can show that it does have a legitimate purpose for registering a domain name even if it is confusingly similar to the mark of a complainant. The Panelist is convinced that any domain name registrant who has registered and is using the domain name in good faith will not be deprived of his registration as a result of this process. It is, of course, incumbent upon the Panel in each case to consider all the circumstances and to undertake a well-reasoned analysis as to whether all the elements of the Policy Ė confusing similarity, no legitimate use and bad faith -- have been satisfied.

The Panelist is of the opinion that this latter approach is the correct one to take where the facts reflect that a domain name is being passively held. The Panelist subscribes to the views set out in Brown & Williamson Tobacco Corp., et al. v. Dennis Wilkins, WIPO Case No. D2001-0865 (September 3, 2001): "Because Respondent is contributing no value-added to the Internet Ė it is merely attempting to exploit a general rule of registration Ė the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." quoting Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044 (March 16, 2000).

The Panelist, therefore, finds that the element of bad faith is properly found under the circumstances of this case.

 

8. Decision

For the foregoing reasons, the Panelist decides that:

1. The Domain Name at issue is confusingly similar to the mark in which Complainant has established rights;

2. Respondent has no rights and no legitimate interest in respect of the Domain Name; and

3. Respondent registered and is using the Domain Name in bad faith.

Accordingly, pursuant to paragraph 4(i) of the policy, the Panelist requires that the registration of the domain name <abeds.com> be transferred to Complainant.

 


 

Arif Hyder Ali
Sole Panelist

Date: October 18, 2002