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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sleep One, Inc. v. TD Domain Names

Case No. D2010-1859

1. The Parties

The Complainant is Sleep One, Inc. of Lenexa, Kansas, United States of America, represented by Hovey Williams LLP, United States of America.

The Respondent is TD Domain Names of West Bay, Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed Domain Name <sleepone.com> is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 2, 2010. On November 3, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed Domain Name. On the same day, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on November 10, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 1, 2010.

The Center appointed Luca Barbero as the sole panelist in this matter on December 6, 2010. 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.

Pursuant to paragraph 10 and 12 of the Rules, the Panel issued a Panel Order on December 16, 2010 requesting the Complainant to provide further statements, explanations and any relevant evidence as to specific statements in the Complaint. The Complainant was thereby requested to provide the Panel with evidence showing that the Domain Name was owned by a registrant different from the Respondent in the present proceeding at the time the Complainant started to use its trademark SLEEP ONE, to submit additional evidence regarding the auction process mentioned in the Complaint and any available additional documents supporting the allegations of the Respondent’s bad faith at the time of the registration. The Complainant was given 5 days to submit the documents and statements requested and the Respondent was given 5 days to reply to the Complainant’s contentions. The date of decision was therefore postponed until December 30, 2010.

On December 21, 2010, the Complainant submitted its response to the Panel Order, which was forwarded by the Center to the Panel on the same day. The Respondent did not submit any documents or statements.

4. Factual Background

The Complainant is an American company which is the owner of the United States trademark No. 3513857 for SLEEP ONE, registered on October 7, 2008 for use in connection with retail store services featuring beds, mattresses, box springs, bed frames, bedroom furniture, pillow and sheets. The Complainant operates the web site “www.sleepone.net”. The corresponding domain name <sleepone.net> was registered on October 4, 2007.

The Domain Name <sleepone.com> was first registered on April 17, 2003 and was acquired by the Respondent following an auction bidding process.

As shown in the printouts of the WhoIs database dated August 10, 2007 and March 9, 2008 submitted by the Complainant, the Domain Name was registered, at the time the Complainant began to use its trademark SLEEP ONE, in the name of “BMF”, of Fresno, California. The Domain Name was used by the prior owner in connection with a noncommercial web site displaying artwork, as highlighted in the printout of the web site provided by the Complainant.

The Domain Name was subject to an auction bidding process to which also the Complainant participated, as per correspondence from Go Daddy Auctions containing the history of the auction for the Domain Name. In particular, the Complainant has provided the following messages received from Go Daddy Auctions: an email informing that the Domain Name was listed for auction, dated May 11, 2010, another email stating that the Complainant had been outbid, dated May 21, 2010, a message dated May 28, 2010 indicating that the Domain Name was not captured successfully and an email dated June 1, 2010, communicating that the Domain Name servers had been changed between May 31, 2010 and June 1, 2010.

Attached to the Complaint and to the Complainant’s response to the Panel Order, are two Affidavit of the President of the Complainant, Mr. Kinde, in which he states that, as soon as he received the notice from Go Daddy on May 28, 2010, he called the registrar and was informed that the auction had been closed since the Domain Name had been assigned to another bidder, for a price of USD 300.

In view of the documents and statements submitted by the Complainant, the Panel concludes that the Domain Name was assigned to the Respondent between the last days of May 2010 and June 1, 2010.

5. Parties’ Contentions

A. Complainant

The Complainant states that it has adopted the trademark SLEEP ONE as early as January 18, 2008 to identify its retail services and owned stores in seven locations in Kansas and Missouri. The Complainant also states that its use of SLEEP ONE trademark on the Internet is prominent, with advertisements through sponsored links on search engines and also a dedicated Facebook page. In the Affidavit attached to the Complainant, the President of Sleep One Inc. points out that the SLEEP ONE trademark “has also appeared in printed, television and radio advertising, as well as on store signage and in many transactional documents used in the course of doing business, such as invoices, business cards and purchase orders”.

With reference to rights or legitimate interests in respect of the Domain Name, the Complainant states that the Respondent has no rights or legitimate interests in the Domain Name since it has not used the Domain Name in connection with a bona fide offering of goods or services, it acquired no rights in the trademark SLEEP ONE and is not commonly known by the Domain Name. The Complainant also states that the Respondent is not making any legitimate noncommercial or fair use of the Domain Name without intent for commercial gain, that it intends to mislead or divert consumers or tarnish the service mark owned by the Complainant and that it is profiting from the Domain Name by advertising also goods and services of some of the Complainant’s competitors.

As to the circumstances evidencing the Respondent’s bad faith, the Complainant states that the Respondent knew or should have known of the Complainant’s registered mark when it registered the Domain Name and that a simple online verification in search engines or at the United States Patent and Trademark Office trademark database would have revealed the Complainant’s trademark rights. The Complainant emphasizes that the trademark SLEEP ONE is constituted by an unusual combination of words and solely functions as a source identifier for the Complainant. The Complainant also points out that the Respondent’s ownership of more than one thousand eight hundred domain names (as per records from Domain Tools attached to the Complaint), clearly shows “the nature of the Respondent’s business in profiting from the sponsored links in voluminous domain name registrations”.

As to bad faith use, the Complainant states that the web site “www.sleepone.com” sets forth sponsored listings that provide links to Complainant’s competitors, including “Sleep Number Mattresses”, “Beds and Bedding”, “the Natural Bed Store” and “Duxiana”, while none of the links direct users to the Complainant’s web site. The Complainant also highlights that such use cannot be considered a good faith use and that the Respondent is damaging the Complainant’s trade name and federally-registered trademark by exploiting it for the purpose of gaining revenues from the sponsored links displayed on the site.

The Complainant also informs the Panel that, as soon as it became aware that the Domain Name had been purchased for USD 300 by the Respondent, it instructed its attorney to send it a letter offering to reimburse the USD 300 USD price in return of the Domain Name, but no reply was received from the Respondent.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall 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 directs that the Complainant must prove each of the following:

(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence of ownership of the United States trademark No. 3513857 for SLEEP ONE, registered on October 7, 2008, in class 20.

In comparing the Complainant’s marks to the Domain Name with reference to SLEEP ONE, it should be taken into account the well-established principle that the generic top level domain may be excluded from consideration as being merely functional component of a domain name. See i.a. Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429: “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770: “the accused domain name <chevychasebank.org> is legally identical to Complainant’s trade name CHEVY CHASE BANK”.

In view of the above, the Panel finds that the Complainant has proven that the Domain Name is identical to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Respondent may establish a right or legitimate interest in the Domain Name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the Domain Name according to paragraph 4(a)(ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.

Accordingly, in line with the UDRP precedent, it is sufficient that the Complainant shows a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name in order to shift the burden of evidence on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the Domain Name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581).

In the case at hand, the Domain Name is identical to the Complainant’s United States trademark registration, the Complainant has not authorized the Respondent to use the Domain Name and there is nothing in the record to suggest that the Respondent is commonly known by the Domain Name.

Moreover, there is no evidence showing that the Respondent has made preparations to use the Domain Name in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, noncommercial or fair use of the Domain Name. In fact, the use of the Domain Name in connection with a pay-per-click page which directs visitors to various commercial websites, including web sites of the Complainant’s competitors, does not constitute a legitimate, noncommercial or fair use of the Domain Name under the Policy, as found in Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044.

The Panel finds, therefore, that the Complainant has made a prima facie case and that, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the Domain Name.

Moreover, it has been repeatedly stated that when a respondent does not avail himself of his right to respond to a Complaint, it may be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim, WIPO Case No. D2003-0269).

Thus, in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name, in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Name in bad faith:

“(i) circumstances indicating that the holder has registered or has acquired the domain name 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 the holder’s documented out-of-pocket costs directly related to the domain name; or

(ii) the holder has 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 holder has engaged in a pattern of such conduct; or

(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.”

As to bad faith at the time of the registration, the Panel notes that, in view of the prior United States trademark registration for SLEEP ONE owned by the Complainant since 2008 and of the advertising of its services, in particular through the web site “www.sleepone.net”, the Respondent was or ought to have been aware of the Complainant’s trademark rights when acquiring the Domain Name between the end of May and the beginning of June 2010.

Moreover, the Panel finds that the expression “sleep one” is a sufficiently uncommon combination of English words and, therefore, the Respondent’s option for a Domain Name identical to the trademark SLEEP ONE, in the absence of a Response or any other evidence of the Respondent’s good faith, suggests that the Respondent was likely aware of the Complainant’s trademark.

The Panel finds that Internet users who are familiar with the Complainant and its web site “www.sleepone.net” would possibly mistakenly enter the Domain Name in their browsers and arrive at the Respondent’s website “www.sleepone.com”. Moreover, the Domain Name has been and currently is linked to a web page where Internet users can find a number of sponsored links to various web sites, including links for services offered by some of the Complainant’s competitors. As a result, Internet users might be misled on the source, sponsorship, affiliation, or endorsement of the Respondent’s website. Furthermore, in all likelihood, the Respondent is profiting by earning pay-per-click revenues (see inter alia Manheim Auctions Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1044, Fry’s Electronics, Inc v. Whois ID Theft Protection, WIPO Case No. D2006-1435, Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286).

In light of the above, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site corresponding to the Domain Name, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or of a product or service advertised therein, according to paragraph 4(b)(iv) of the Policy.

Moreover, it has been repeatedly stated that when a Respondent fails to reply to the Complainant’s contentions, it is open for the Panel in appropriate circumstances to infer a prima facie case of bad faith registration and use. See, inter alia, Renegade LLC v. Kenneth Gibert WIPO Case No. D2008-0646, in which the panel stated: “The Complainant argues that the Domain Names were registered and used in bad faith to divert Internet users to the Respondent’s website for commercial gain based on confusion with the Complainant’s mark. Again, the Respondent has not denied these allegations or provided any evidence to support a finding that it registered and used the Domain Names in good faith”.

In view of the above, the Panel finds that the Domain Name was registered and is being used in bad faith.

7. Decision

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 <sleepone.com> be transferred to the Complainant.

Luca Barbero
Sole Panelist
Dated: December 28, 2010

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