WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Denver Mattress Co., LLC v. Jane Phillips
Case No. D2013-0797
1. The Parties
The Complainant is Denver Mattress Co., LLC of Denver, Colorado, United States of America (“United States” or “U.S.”), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Jane Phillips of Spokane Valley, Washington, United States (the “Respondent” or “Respondent Jane Phillips”).
2. The Domain Name and Registrar
The disputed domain name <denvermattressstores.com> (the “Domain Name”) is registered with eNom, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 3, 2013. On May 6, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent Jane Phillips is listed as the registrant and providing her contact details, including the email address “[ ]@gmail.com” and a street address in Spokane Valley, Washington, United States.
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 electronically and a Written Notice of the Complaint was sent by courier, and the proceedings commenced on May 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 30, 2013. Electronic delivery to the Respondent’s “[ ]@gmail.com” email address provided by the Registrar was apparently successful on May 10, 2013.
On May 10 and 13, 2013, a third party with an email address at Denver Discount Mattress, a competitor of the Complainant whose advertisement was at that time displayed on the website at the Domain Name, sent email communications to the Center requesting copies of the pleadings, but denying any representation of the Respondent.
On May 15, 2013, the courier delivered the written notice of the Complaint to the Spokane Valley, Washington address provided for the Respondent by the Registrar, and advised the Center that the delivery had been signed for with a “signature on file.”
The Center had also tried to notify the Respondent of the commencement of the proceedings on May 10, 2013, electronically by email to Jane Phillips and to the postmaster at the website and by written notice sent by courier to the address shown on the website for Denver Mattress Stores, in Denver, Colorado, United States. Both of these attempts were unsuccessful. Delivery of the Center’s emails to “[ ]@denvermattressstores.com” and to the postmaster address failed. The Center was advised by the courier that delivery of written notice failed because the Denver, Colorado street address and telephone number for Denver Mattress Stores appearing on the Domain Name website were incorrect. The courier subsequently successfully delivered this duplicate copy of the Complaint and annexes to the Respondent’s Spokane Valley, Washington address, where it was signed for by “S. Sauther” on May 21, 2013.
The Respondent Jane Phillips did not file a response to the Complaint. However, on May 30, 2013, “Steven Sauther” electronically filed an unsigned Response to the Complaint with the Center under the case number of this UDRP proceeding, with the caption Denver Mattress Co., LLC (Complainant) v. Sauther & Assoc. DBA Local Mattress Leads (Respondent) (hereafter the “Sauther Response”). The Sauther Response did not include any reference to the original Respondent Jane Phillips named in the Complaint and verified by the Registrar as the correct registrant of the Domain Name. Instead, the Sauther Response substituted Sauther & Assoc. DBA Local Mattress Leads as the purported respondent (the “Sauther Respondent”), identifying Steven Sauther as its authorized representative, and providing contact information for the Sauther Respondent through two individuals, Steven Sauther and William Sauther, at identical addresses (a post office box in Veradale, Washington), the same telephone and fax numbers, and similar email addresses, “[ ]@localmattressleads.com” and “[ ]@localmattressleads.com”.
The Center appointed Dana Haviland as the sole panelist in this matter on June 19, 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.
Due to exceptional circumstances, the due date for the Decision was extended until July 17, 2013.
4. Factual Background
The Complainant manufactures mattresses and bedding products in Denver, Colorado, and sells those products through one of its ninety retail stores throughout the United States. The Complainant has provided mattress and bedding products under the DENVER MATTRESS CO. mark since at least 1993, and owns three U.S. registrations containing the term DENVER MATTRESS:
- U.S. Registration No. 2248632, DENVER MATTRESS CO., registered on June 1, 1999, with a priority date of July 1, 1993;
- No. 2380833, DENVER MATTRESS, January 1998;
- No. 4168499, REJUVEN8 BY DENVER MATTRESS, December 11, 2010 (together, the “DENVER MATTRESS Mark”).
The Complainant has widely advertised its products under the DENVER MATTRESS Mark for twenty years through television, radio, newspapers, magazines, direct mail, sports sponsorships and otherwise, including online through its website, “www.denvermattress.com”. As a result of the Complainant’s continuous use of the mark, it has established common law rights in the DENVER MATTRESS Mark in the United States in addition to its registration rights.
The Domain Name was registered on October 9, 2011. According to the WhoIs report for the Domain Name submitted by the Complainant, the Respondent also “owns about 953 other domain names” and the email address given as contact information for the Domain Name registrant – [ ]@gmail.com – is associated with about 936 domain names.
As evidenced by a screenshot of the Domain Name at the time of filing of the Complaint, the website appears to have been registered and used for a business named Denver Mattress Stores, with a street address and telephone number in Denver, Colorado, that describes its services to the Internet user as providing expert assistance and information in mattress selection and “Helping You Find Great Mattress Retailers in Denver”. However, the website does not include any evidence of expertise, information or assistance to the Internet user in mattress selection provided by Denver Mattress Stores itself, but instead devotes most of its space to one large advertisement for a single retail mattress store in Denver, which is not Denver Mattress Stores itself, but Denver Discount Mattress, a competitor of the Complainant.
5. Parties’ Contentions
The Complainant asserts that the Domain Name is identical or confusingly similar to trademarks in which it has registered and common law rights, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Respondent registered and used the Domain Name in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent Jane Phillips did not file a response to the Complainant’s contentions.
A third party, Steven Sauther, filed a response in this proceeding, naming “Sauther & Assoc. DBA Local Mattress Leads” as the respondent. As discussed below in Section 6.A, the Panel finds that Sauther & Assoc. DBA Local Mattress Leads is not a proper respondent in this UDRP proceeding.
6. Discussion and Findings
Under the Policy, paragraph 4(a), in order to prevail, a complainant must prove the following three elements of a claim for transfer or cancellation of a respondent’s domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identity of the Proper Respondent
The Complaint names Jane Phillips as Respondent, and the Registrar has confirmed that Respondent Jane Phillips is the Domain Name registrant and thus the proper respondent in this UDRP proceeding.
On May 30, 2013, Steven Sauther filed a Response bearing the caption Denver Mattress Co., LLC (Complainant) v. Sauther & Assoc. DBA Local Mattress Leads (Respondent), under the case number of this UDRP proceeding. The Sauther Response did not include any reference to the original Respondent Jane Phillips named in the Complaint. Instead, the Sauther Response substituted Sauther & Assoc. DBA Local Mattress Leads as the purported respondent, identifying Steven Sauther as its authorized representative, and providing contact information through two individuals, Steven Sauther and William Sauther.
The Panel finds that the Sauther Respondent is not a proper respondent in this proceeding. Under the UDRP Rules, the Respondent must be the holder of the disputed domain name, which in this case is Jane Phillips, as shown by the Complainant’s evidence of its WhoIs search and as verified by the Registrar. (See paragraph 1 of the Rules, Definitions: “In these Rules, …‘Respondent’ means the holder of a domain-name registration against which a complaint is initiated.”). Further, the UDRP and the Rules make no provision for third party intervention in a domain name administrative proceeding, which is designed to be an efficient and cost-effective summary dispute resolution proceeding for determination of the right to a domain name as between the owner of a mark used in the domain name and the holder of the domain name registration.
There is no legal or evidentiary basis for substitution of Sauther & Assoc. DBA Local Mattress Leads for the Respondent Jane Phillips named in the Complaint and verified by the Registrar as the registrant of the Domain Name. Sauther & Assoc. DBA Local Mattress Leads is not the holder of the Domain Name registration, and neither is either of the two individuals named in the Sauther Response – Steven Sauther and William Sauther. The Sauther Response offers no evidence that the Sauther Respondent, Steven Sauther or William Sauther has any rights to the Domain Name in question by assignment, license or otherwise. The Sauther Response is not proffered on behalf of the Respondent Jane Phillips, and she is not named or referred to anywhere in the allegations of or annexes to the Sauther Response as either a respondent in this proceeding or as a representative or employee of the Sauther Respondent. The Sauther Response contains no allegation or evidence of any nexus or relationship between Respondent Phillips and Sauther & Assoc., Local Mattress Leads, Steven Sauther or William Sauther.
Respondent Jane Phillips’ use of the email address “[ ]@gmail.com” as contact information for the Domain Name could perhaps give rise to an inference that the Respondent is somehow related to one of the individual or business entity Sauther third parties or, more likely, that one of the Sauther third parties used the name Jane Phillips to register the Domain Name under a false name and/or with false contact information, since the mailing address, email address, and fax numbers registered as contact information for Jane Phillips and the Domain Name in question are different from the contact information for the Sauther third parties set forth in the Sauther Response. The second above-mentioned inference would also be supported by the fact that one of the copies of the Complaint sent by the Center to the Respondent Jane Phillips at her street address in Spokane Valley, Washington, was signed for by “S. Sauther” and by the fact that the unsigned Sauther Response was filed by a Steven Sauther on behalf of a respondent called “Sauther & Assoc. DBA Local Mattress Leads.”
Further, the Complainant has alleged that one of the approximately 953 domain names registered by Respondent Jane Phillips, <clevelandmattressstores.com>, shares the same IP address as the Domain Name and has a corresponding website very similar to the Domain Name website, and that a second similar domain name, <newarkmattressstores.com>, registered to a William Sauther, also shares the same IP address and resolves to a website similar in text and advertising to the Domain Name and <clevelandmattressstores.com> websites.
In the Sauther Response, the self-proclaimed respondent Sauther & Assoc. DBA Local Mattress Leads proudly claims ownership of over 400 similar domain names, each incorporating a city name with the term “mattress stores” (hereafter “CityMattressStores.com domain names”), including the Domain Name and the above-mentioned <clevelandmattressstores.com> and <newarkmattressstores.com> domain names. The Sauther Response describes the Sauther Respondent’s alleged business model of using these CityMattressStores.com domain names to direct potential Internet mattress customers to a single mattress retail store in each city in exchange for advertising revenues paid to the Sauther Respondent for the exclusive right to advertise on each of the CityMattressStores websites. The list of these 400 plus CityMattressStores.com domain names includes the individual dates of registration for each, evidencing a series of batch registrations from October 9, 2011 (the date of registration of the Domain Name) through May 21, 2013 (the latter date being eleven days after the notification of the Complaint in this proceeding), but the list includes no indication of the actual named registrant of each domain name.
Indeed, the Sauther Response includes no evidence at all, by WhoIs data, other documentation, or declaration, to establish any ownership, assignment, license, or other rights whatsoever to any of the 400 listed domain names, and most importantly, to the Domain Name at issue in this proceeding. Even the portion of the WhoIs record of the registration of the Domain Name submitted by the Sauther Respondent inexplicably omits the information of the actual name of the registrant, Jane Phillips.
For these reasons, the Panel finds that Sauther & Assoc. DBA Local Mattress Leads is not a proper respondent in this UDRP proceeding, and that Respondent Jane Phillips, confirmed by the Registrar as the holder of the Domain Name, is the only proper respondent in this case.
B. Identical or Confusingly Similar
The Complainant manufactures mattress and bedding products in Denver, Colorado and sells them throughout the United States in its ninety retail stores. The Complainant has established that it has registered and common law trademark rights in its DENVER MATTRESS Mark dating back to 1993.
Under paragraph 4(a)(i) of the Policy, a domain name is confusingly similar to a mark where the domain name fully incorporates the mark and simply adds a generic or descriptive term that does not negate the confusing similarity. See Las Vegas Sands, LLC v. Michael Silver, WIPO Case No. D2006-0979; Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768. The Domain Name <denvermattressstores.com> fully incorporates the Complainant’s DENVER MATTRESS Mark and simply adds the generic term “stores” that, does not negate the confusing similarity. On the contrary, the addition of the term “stores” is likely to increase the confusing similarity in view of Complainant’s conduct of its mattress business through its retail stores. Where, as here, the added generic term is related to the Complainant’s business, the confusing similarity is reinforced. See, e.g., Two Men and a Truck / International, Inc. v. Jason Rager / Paydues Inc., WIPO Case No. D2011-1312 (<twomenandatruckfranchise.com> confusingly similar to the TWO MEN AND A TRUCK trademark).
It is well established that the generic top level domain, i.e., “.com,” may be disregarded for the purpose of evaluating confusing similarity or identity. Playboy Enterprises International, Inc. v. John Taxiarchos, WIPO Case No. D2006-0561; Burberry Limited v. Carlos Lim, WIPO Case No. D2011-0344; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Hugo Boss A.G. v. Abilio Castro, WIPO Case No. DTV2008-0001.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s DENVER MATTRESS mark. The Complainant has thus established the first element of its claim, under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent may establish rights or legitimate interests in a domain name by proof of any of the following non-exclusive list of circumstances:
(i) before any notice to the respondent of the dispute, the respondent used, or made 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has not acquired trademark or service mark rights; 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 or service mark at issue.
The Complainant alleges that the Respondent is not known by the Domain Name, has no trademark rights in the Domain Name and is not authorized or licensed to use the Complainant’s DENVER MATTRESS Mark in the Domain Name or otherwise. The Complainant further alleges that the Respondent’s use of the Domain Name is not in connection with a bona fide offering of goods or services or with any noncommercial or fair use, because the Respondent is using Complainant’s DENVER MATTRESS Mark for commercial gain by selling or licensing advertising space on the website for advertisements by one of Complainant’s competitors, Denver Discount Mattress. The screenshot of the website at the Domain Name submitted by Complainant evidences the commercial and competitive use of the Domain Name by the Respondent. The website is clearly being used for commercial gain from advertising revenues from an advertisement displayed by one of the Complainant’s competitors, Denver Discount Mattress.
The Policy places the burden on the complainant to establish the absence of the respondent’s rights or legitimate interests in the domain name. Because of the inherent difficulties in proving a negative, the consensus view is that a complainant need only put forward a prima facie case that the respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1.
The Panel finds that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.
Neither the Respondent, who did not file a response, nor the Sauther Respondent, who submitted an unsigned response on its own behalf, has submitted evidence establishing any rights or legitimate interests in the Domain Name. Having no registration rights to the Domain Name and having provided no evidence of any assignment, license or authorization from either the Complainant or the Respondent to use the Domain Name for any purpose, the Sauther Respondent cannot appear in this proceeding to claim some rights or legitimate interests in the Domain Name by virtue of its self-serving allegations of a bona fide offering of goods and services. Moreover, the bona fide nature of its alleged mattress store advertising business may be questioned, in this Panel’s view, because it is apparently carried out through the registration of batches of hundreds of domain names under a variety of registrant names and, at least in this case, false contact information, and admittedly without any prior trademark search, in hopes of earning revenues through an advertising scheme described in a Local Mattress Leads press release submitted with the Sauther Response as “a better, more affordable alternative for clients than pay-per-click advertising”.
Like the respondent in Factory Mutual Insurance Company v. Valuable Web Names, WIPO Case No. D2008-1014, the Respondent Jane Phillips and/or the Sauther Respondent appear to be “domain name aggregator[s]” whose “knowledge of Complainant’s mark may be implied from [their] willful blindness to that mark or the marks of others…., as they “apparently had no procedures in place to vet newly acquired domain names to avoid interfering with third party rights”, so that if they really were unaware of the Complainant’s mark, “it was likely due to willful blindness”. See WIPO Overview 2.0, paragraph 3.4.
Further, the Domain Name website uses the Complainant’s DENVER MATTRESS Mark to advise interested competing mattress retailers in Denver that “you could be #1 on Google” by advertising on the website and increase revenues by receiving customer leads generated from visits to the Domain Name website by Internet users interested in purchasing a mattress from a Denver mattress store. Under these circumstances, the Respondent could not innocently claim that she had no knowledge of the Complainant’s DENVER MATTRESS Mark, or as alleged in the Sauther Response, that the similarity of the Domain Name and the Complainant’s DENVER MATTRESS Mark is just “a coincidence” because the term “Denver Mattress Stores” was merely being used as an effective search engine term on Google for a mattress store located in that particular city, and not from any intent to trade on the goodwill of the Complainant’s DENVER MATTRESS Mark. It is not credible to argue that the Respondent would have registered a domain name because it was an effective Google search term without performing a prior Google search using that term to determine its efficacy. The Complainant has shown that a simple Google search for “Denver Mattress” stores” as contemplated by the Denver Mattress Stores business described on the Domain Name website would have led the Respondent to the Complainant’s website, revealed the Complainant’s use of its DENVER MATTRESS Mark in its company name and advertising, and put the Respondent on notice of its rights to the DENVER MATTRESS Mark. In addition, with respect to any alleged good faith use of the Domain Name by the Respondent, the same Google search for “Denver mattress stores” would have shown Respondent that Denver Discount Mattress was not only a Denver mattress store but a competitor of the Complainant, negating any alleged good faith in the use of the Domain Name incorporating the Complainant’s Mark for the purpose of receiving advertising revenues from the Complainant’s competitor.
The Respondent’s alleged use of the Domain Name incorporating the Complainant’s DENVER MATTRESS Mark to optimize the results of Google searches by Internet users searching for a mattress store in Denver, in conjunction with the display on the Domain Name website of an advertisement by a competitor of the Complainant from which the Respondent derives revenues, does not constitute a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy.
In Boise Garage Door LLC v. Sunrise Garage Door Co., WIPO Case No. D2012-1651, the respondent, who competed with the complainant in the sale of garage doors in the Boise area, argued that it had a right or legitimate interest in the domain name <boisegaragedoor.com> which incorporated the complainant’s registered BOISE GARAGE DOOR trademark because it used the disputed domain name only as a “search engine optimization term” for a forwarding page leading to its primary website at “www.sunrisegaragedoor.com” and not for the purpose of diverting customers from the complainant. The UDRP panel noted that:
“The fact that Respondent “only” uses the Domain Name so that customers or potential customers will end up at its competitive website is not an exculpatory explanation but, rather, an incriminating admission. Potential customers might not ever bother to find Complainant if they find themselves at Respondent’s website that serves the same area as Complainant does.”
The panel then held that “using a domain name in these circumstances to offer services similar to those offered by Complainant is not a ‘bona fide offering’ under the Policy”, found bad faith registration and use of the domain name under paragraph 4(b)(iv) of the Policy, and transferred the domain name to the complainant.
This Panel agrees with the reasoning of the UDRP panel in the Boise Garage Door case, supra. See also Teresa Christie, d/b/a The Mackinac Island Florist v. James Porcaro, d/b/a Weber’s Mackinac Island Florist, WIPO Case No. D2001-0653 (respondent florist, who was a competitor of the complainant florist in the same geographic area, had no rights or legitimate interests in the domain names <mackinaislandflorist.com>, <mackinacislandflorist.org> and <mackinacislandflorist.net> where the complainant had prior common law trademark rights in her business name “The Mackinac Island Florist” and the respondent had registered and was using the domain names in bad faith to compete with the complainant).
In The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., WIPO Case No. D2005-1318, the UDRP panel stated that “A panel examining the legitimacy or bona fides of a respondent’s business looks […] to the respondent’s entitlement to the domain name it has selected. Use of one party’s mark by a competitor is especially suspect because of the likelihood of competitive injury”. Citing the Mackinac Island Florist case, supra, the panel then rejected the respondent’s argument that it had rights and legitimate interests in its <newenglandveincenter.com> domain name, which incorporated “a close variant” of the complainant’s name and marks which were a combination of both a geographic area and a description of the complainant’s services, because the respondent’s business was “competing directly with complainant in the same geographic area”.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name, and that the Complainant has satisfied the second element of its claim, in accordance with paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out, by way of example, four circumstances, each of which, if proven, shall be evidence of the registration and use of a domain name in bad faith for the purpose of paragraph 4(a)(iii) of the Policy:
(i) circumstances indicating that the registrant has registered or 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 registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant 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 registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location.
The Complainant has alleged bad faith registration and use of the Domain Name, because the Respondent is (1) using the Domain Name in combination with the Complainant’s registered trademarks to deceive the public by purportedly offering a mattress selection service but then failing to provide the services; (2) is using the Domain Name in combination with Complainant’s registered trademarks to generate advertising revenue by trading on Complainant’s goodwill and reputation; (3) appears to be using the Domain Name to generate revenue by hosting the website for one of the Complainant’s competitors ; (4) appears to be deliberately deceiving the public as to her geographic location in the United States; (5) has failed to investigate or clear trademark rights to the Domain Name prior to registration; (6) has registered approximately 953 other domain names, at least one of which hosts a website similar to that hosted on the Domain Name; and (7) has failed to respond to repeated requests from the Complainant to cease infringement of the Complainant’s DENVER MATTRESS Mark.
The Complainant has submitted substantial evidence in support of its allegations of bad faith registration and use, and the Respondent has failed to make any response or submit any evidence rebutting the Complainant’s allegations. As discussed in the above sections of this Decision on the Identity of the Proper Respondent and on Rights or Legitimate Interests, the Sauther Response itself and its description of the Local Mattress Leads business raises inferences of bad faith registration and use of the Domain Name by the Respondent and/or by others she has permitted to use the Domain Name, as well as bad faith by virtue of the provision of false contact information for the Domain Name to the Registrar.
The Complainant has shown that the website at the Domain Name <denvermattressstores.com> provides false information about a nonexistent business calling itself Denver Mattress Stores, at a nonexistent address and telephone number. On the website, Denver Mattress Stores describes itself as a customer service business providing information and assistance to Internet users in the selection of mattresses with experts not only online but at a specific street address in Denver and offering its services at various other locations in the Denver area. The following text appears on the Domain Name website:
“DenverMattressStores.com is in the customer service business, gladly helping people in Denver Colorado with the purchase of the perfect mattress for their lifestyle requirements. Whether making a purchase online or locally, there is no need to go it alone when wading through the endless mattress options. The smartest way to buy a mattress is through Denver Mattress Stores where they help you make the perfect mattress selection. …. The Denver Mattress Stores experts will guide [you] through many options to find the mattress selection that is just right for you. Denver Mattress Stores proudly provides services to the Denver, Colorado area…”.
The Domain Name website shows a street address and telephone number in Denver, Colorado, but there is no business named Denver Market Stores at that address. The Complainant has submitted a sworn declaration by one of its employees that he has viewed the address in question, and there are only a restaurant and daycare center at that address. The Center was also advised by the courier service that its delivery of written notice of the Complaint to the Respondent at the street address shown on the Domain Name website for Denver Mattress Stores could not be made because the address and the telephone number given were incorrect.
The Domain Name website does not in fact offer any expertise or information about mattress selection to the Internet user, just a lengthy advertisement about one mattress store in Denver, Denver Discount Mattress, and the mattress products it sells as a competitor of the Complainant. Most of the Domain Name website is devoted to this advertisement. The Domain Name website is clearly being used for commercial gain from advertising revenues from an advertisement displayed by one of the Complainant’s competitors, Denver Discount Mattress.
With respect to the issue of bad faith registration and use of the Domain Name, the Respondent has submitted no response or rebuttal of the Complainant’s allegations and evidentiary submission, but in the Sauther Response, it is alleged that:
“The domain name was not registered by the Respondent to disrupt the Complainant’s business. Respondent registered the domain name in order to fit its pattern of geographically optimized domain names. This domain name fits the pattern of all other domain names registered by Respondent; any similarity to Complainant is coincidental.”
In response to the claims that no Trademark search was conducted on behalf of the Respondent, it can be shown in [the “List of similar domain names registered by the Respondent” submitted as an annex to the Sauther Response] that <denvermattressstores.com> was part of a bulk registration process that followed the formula “<city>mattressstores.com” where it is clear that the respondent had no intent to infringe, or ability to foresee the Complainant’s trademark.”
As discussed above in Section 6B of this Decision, under the circumstances of this case, the Respondent cannot disclaim knowledge of or lack of intent to trade on the goodwill of the Complainant’s DENVER MATTRESS trademark rights because of automatic registration of hundreds of domain names without prior trademark or Google searches. See Factory Mutual Insurance Company v. Valuable Web Names, supra, and the discussion of “Willful Blindness” in the WIPO Overview 2.0, paragraph 3.4:
“Willful Blindness: Some panels have applied a concept of willful blindness in UDRP cases as a basis for finding bad faith. For example, a respondent’s registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith. Panels holding that a respondent must accept the consequences of turning a blind eye to any third-party trademarks through failure to conduct adequate searches have tended to limit the application of this principle to cases in which the respondent is a professional domain name registrant, or has been found to have engaged in a pattern of abusive registration and use of domain names identical or confusingly similar to trademarks (although some panels have also noted that, in theory, such general principle may be just as applicable to non-professional domain name registrants, who, after all, are also subject to paragraph 2 of the UDRP, which provides: “It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.”).[Citations omitted].”
To the contrary, another annex to the Sauther Response, the “original press release” for the Sauther Respondent’s “new advertising company” Local Mattress Leads, specifically references its searches on Google and other search engines with respect to the <denvermattressstores.com> Domain Name registered on October 9, 2011:
“This system created by Local Mattress Leads utilizes websites, which have been created for specific markets and have been optimized with keywords used by people searching for a mattress store. With localized websites like BoiseMattressStores.com and DenverMattressStores.com, the search terms naturally rise to the top of search results. These websites are found on the first page of Google and other search engines in every market across the United States.”
The Complainant has submitted evidence of the results of a Google search utilizing the search term “Denver Mattress” which provides many links identifying the Complainant Denver Mattress Co. and revealing its use of its DENVER MATTRESS Mark in its business name and on its website, as well as the existence of competition in the Denver area between the Complainant and its competitor Denver Discount Mattress, the advertiser featured on the Respondent’s Domain Name website. In the Panel’s view, any denial by the Respondent or the Sauther Respondent of prior knowledge or notice of the Complainant’s use of its DENVER MATTRESS Mark in connection with the registration and use of the Domain Name is simply not credible under the circumstances of this case.
For all of the above reasons, the Panel finds that the evidence submitted by the Complainant is sufficient to show the Respondent’s bad faith registration and use of the Domain Name, in violation of paragraph 4(b)(iv) of the Policy. See Boise Garage Door LLC v. Sunrise Garage Door Co., supra (“This case is not about the fact that Respondent is a garage door merchant […] in Boise Idaho. It’s about Respondent’s infringing use of a competitor’s trademark in a domain name”; The New England Vein & Laser Center, P.C. v. Vein Centers for Excellence, Inc., supra (“it is nothing short of disingenuous for Respondent […] to disclaim any duty to investigate [the] competitor’s trademark rights in its home state […] bad faith is established by Respondent’s decision deliberately to ‘free ride’ on the goodwill associated with Complainant’s marks.”).
In conclusion, the Panel finds that the Complainant has established the Respondent’s bad faith registration and use of the Domain Name under paragraph 4(b)(iv) of the Policy, and that the Complainant has therefore satisfied the third element of its claim under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <denvermattressstores.com> be transferred to the Complainant.
Date: July 17, 2013