WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Serta, Inc. v. Nicholas Urban
Case No. D2012-2511
1. The Parties
The Complainant is Serta, Inc. of Hoffman Estates, Illinois, United States of America, represented by Quarles & Brady LLP, United States of America.
The Respondent is Nicholas Urban of New Castle, Delaware, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sertalivingrooms.com> (the “Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2012. On December 20, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On December 21, 2012, GoDaddy.com, LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On December 27, 2012 the Center received an e-mail communication from the Respondent and replied to Respondent on the same date, before the Notification of Complaint and Commencement of Administrative Proceeding.
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 the Respondent of the Complaint, and the proceedings commenced on January 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2013. No other communication was received by the Center from the Respondent.
The Center appointed Michelle Brownlee as the sole panelist in this matter on February 5, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant owns trademark registrations for the mark SERTA or design marks that include the word SERTA in connection with mattresses and furniture in International Class 20, including United States registration nos. 1180198, 2041918, 582463, 582464, and others, as well as registrations in Fiji, Brazil, Mexico, Italy, South Africa and Venezuela.
The Domain Name was registered on August 11, 2012.
5. Parties’ Contentions
The Complainant has used the SERTA trademark in connection with mattresses in the United States since at least as early as August 1938, and has expanded its use over time to related goods such as mattress foundations, mattress pads, pillows and furniture. By virtue of the Complainant’s extensive marketing of its SERTA goods, the SERTA mark has become recognized by consumers throughout the world as designating the Complainant as the source of such products. SERTA is also the Complainant’s trade name, and the Complainant markets and sells its SERTA branded products on its website ‘’www.serta.com’’.
The Complainant contends that the Domain Name is confusingly similar to the SERTA trademark because it pairs the trademark with the generic term “living rooms”. The Complainant argues that the Respondent has no rights to or legitimate interests in respect of the Domain Name and has registered and is using the Domain Name in bad faith. The Respondent is using the Domain Name to direct Internet users to a brand page for a competitor of the Complainant on the Respondent’s website housed at the domain name <furnitureurban.com>. The Respondent’s website sells furniture and mattresses, but not goods manufactured by the Complainant. The Complainant argues that because the Respondent is in the business of selling furniture and mattresses, he surely would have been aware of the Complainant’s rights in its SERTA trademark.
The Respondent did not reply to the Complainant’s contentions.1
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the SERTA trademark. There are many UDRP decisions that find that the pairing of a distinctive trademark with less distinctive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (<christiandiorcosmetics.com> and <christiandiorfashions.com> confusingly similar to CHRISTIAN DIOR); and Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032 (<leasinglexus.com> and <lexuselite.com> confusingly similar to LEXUS).
Accordingly, the Panel finds that the Domain Name, which pairs the distinctive SERTA trademark with the less distinctive term “living rooms”, is confusingly similar to the Complainant’s SERTA trademark.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights to or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name at issue in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
In this case, the Respondent has not presented evidence that the Respondent used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The evidence presented by the Complainant shows that the Respondent has used the Domain Name to direct Internet users to a site that sells products that compete with the Complainant’s products. Accordingly, Panel finds that the Respondent does not have rights to or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name at issue 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the 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, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Panel finds that the Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent’s use of the Domain Name to attract Internet users to the Respondent’s website creates confusion as to the Complainant’s sponsorship or endorsement of or affiliation with the Respondent’s website and presumably results in commercial gain to the Respondent, who is using the website to advertise products that compete with the Complainant’s products.
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 <sertalivingrooms.com> be transferred to the Complainant.
Date: February 19, 2013
1 The Respondent did send an e-mail to the Center on December 27, 2012 asking questions about the process for responding to a complaint under the Policy, such as whether it is recommended for an attorney to handle the response, whether there is any cost to submit a response and what the response deadline was. The Center answered the Respondent’s questions. No further communication was received from the Respondent.