Complainant is National Bedding Company L.L.C. of Hoffman Estates, Illinois, United States of America, represented by the law firm Quarles & Brady LLP, United States of America.
Respondent is Sleepyboyz of Prattville, LLC of Montgomery, Alabama, United States of America.
The disputed domain name <americasmattress-al.com> is registered with Register.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2009. On October 28, 2009, the Center transmitted by email to Register.com a request for registrar verification in connection with the disputed domain name. On October 28, 2009, Register.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 4, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 26, 2009.
The Center appointed Richard G. Lyon as the sole panelist in this matter on December 1, 2009. The Panel finds that it was properly constituted and has jurisdiction over this proceeding.1 The Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Complainant sells mattresses worldwide. It holds, among other marks, two trademarks for AMERICA'S MATTRESS registered in the United States Patent and Trademark Office. The earlier of these was registered in 2005.
Respondent registered the disputed domain name in January 2007. The disputed domain name resolves to a parking page, with a photograph and several hyperlinks to topics related to the State of Alabama.
1. Complainant holds rights in AMERICA'S MATTRESS by reason of its federally-registered trademarks. The disputed domain name is confusingly similar to these marks.
2. Complainant has never authorized Respondent to use its marks and there is no evidence that Respondent, but for the disputed domain name, has ever been known commercially or individually by any name including “America's Mattress.” The use of Complainant's mark for a parking page is not legitimate under the Policy.
3. “Upon information and belief, Respondent obtained the domain name registration AMERICASMATTRESS-AL.COM with the full knowledge of Complainant's long prior use and ownership of its AMERICA'S MATTRESS mark.” Such registration, and subsequent use of the disputed domain name for a parking page, were obviously intended to divert Internet users seeking Complainant to Respondent's site for commercial gain, in violation of paragraph 4(b)(iv) of the Policy. Respondent is responsible for the content on its site even if the links were placed there by a registrar, Internet service provider, or other third party.
Respondent did not reply to Complainant's contentions.
The disputed domain name consists of Complainant's mark (without the apostrophe, a character that cannot be used in a web address) with “-AL” added at the end. As its dominant feature is Complainant's mark, the disputed domain name is confusingly similar to Complainant's mark. Paragraph 4(a)(i) of the Policy has been satisfied.
Complainant has demonstrated that Respondent has not been licensed to use Complainant's mark, and nothing in the record suggests that Respondent has been commonly known by the phrase “America's Mattress”. The disputed domain name has been used for commercial purposes, and Respondent has provided no evidence of use that might allow the Panel to find a legitimate use or applicability of any other safe harbor in paragraph 4(c) of the Policy. Paragraph 4(a)(ii) of the Policy has been satisfied.
Complainant provides no evidentiary support for its confident assertion, quoted in Section 5(a)(3) above, that Respondent had knowledge of Complainant and its mark when it registered the disputed domain name. Unlike an action for trademark infringement in the United States, only in very limited circumstances, not present here, does the United States doctrine of constructive notice apply in Policy proceedings. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.42; see, e.g., Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172.
Here, though, the content of Respondent's website and the text of the disputed domain name itself indicate that Respondent chose the name to play off the goodwill attached to Complainant's mark. The disputed domain name merely adds AL, the United States Postal Service abbreviation for Alabama, the state of Respondent's residence, to the exact mark. The website has been used entirely for hyperlinks related to Alabama; no link on Respondent's parking page bears any relation to mattresses, bedding, or any item remotely related to the domain name's dominant feature. Thus the only conceivable reason for including Complainant's mark in the disputed domain name at the date of registration or during subsequent use is to take advantage of the goodwill of Complainant's mark. Complainant correctly argues that the site's content is attributable to Respondent whether Respondent or a third party such as the registrar, selected the links. See, e.g., Alabama One Call, Louisiana One Call System, Tennessee One-Call System, Inc. v. Windward Marketing Group, Inc., WIPO Case No. D2009-1243; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.
Complainant has carried its evidentiary burden under paragraph 4(a)(iii) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <americasmattress-al.com> be transferred to Complainant.
Richard G. Lyon
Dated: December 3, 2009
1 As in any default case, the Panel has reviewed the record to determine whether the Center, as provider, has discharged its responsibility under paragraph 2(a) of the Rules to “employ reasonably available means calculated to achieve actual notice to Respondent”. While the Center was unable to transmit the Complaint to Respondent by email, the copy sent by courier was duly delivered. That delivery constitutes “achieving actual notice” which under paragraph 2(a) meets the Center's obligation.
2 This Panel believes that the second sentence of paragraph 3.4 of the Overview, and its reference to Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, set out an overly broad exception to the Consensus View stated in the first sentence. In his view constructive notice may only be used when other indicia of cybersquatting are present or when the mark at issue is distinctive or famous. See discussion in Kellwood Company v. Onesies Corporation, cited in the text.