WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sint, LLC v. Hostingcourt.com
Case No. D2015-0948
1. The Parties
The Complainant is Sint, LLC of Hicksville, New York, United States of America (“USA”), represented by Dentons US, USA.
The Respondent is Hostingcourt.com of Dubai, United Arab Emirates (“UAE”), self-represented.
2. The Domain Name and Registrar
The disputed domain name <sleepysuae.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2015. On June 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On June 10, 2015, the Center sent an email to the Complainant requesting for confirmation of the communication of the Complaint. The Complainant filed an amended Complaint on June 11, 2015.
The Center verified that the Complaint together with the amended 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 June 17, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 7, 2015. The Response was filed with the Center on July 6, 2015.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on August 14, 2015. 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
According to the Complainant, it is the largest privately-owned and operated mattress retailer in the USA with more than 1,000 showrooms across.
The Complainant trades under the name “Sleepy’s” and has used the trademark SLEEPY’S since at least as early as 1977. The Complainant owns numerous registered trademarks or service marks comprising or incorporating the word SLEEPY’S of which the following are representative for present purposes:
SLEEPY’S, United States Patent and Trademark Office (“USPTO”), principal register, registered January 24, 1984, registration number 1265009, class 42;
SLEEPY’S THE MATTRESS PROFESSIONALS (and design), USPTO, principal register, registered January 19, 2010, registration number 3739598, class 35.
The Complainant also owns the domain name <sleepys.com> and has conducted business at the corresponding website under the SLEEPY’S trademark since December 18, 1995.
The Respondent operates a website at the disputed domain name through which it sells mattresses and beds branded KING KOIL. The Respondent’s website also displays the legend “SLEEPYS The Mattress Professionals AUTHORIZED DEALER”.
The disputed domain name was registered in the name of the Respondent on February 11, 2014.
5. Parties’ Contentions
The Complainant has produced images of the summary page of the trademark registrations listed in section 4 above and contends that it has acquired a substantial reputation and goodwill in the trademark SLEEPY’S.
The Complainant contends that the disputed domain name is identical or confusingly similar to its trademark. The addition of the geographical term “uae” would confuse people into thinking the disputed domain name was associated with the Complainant and its business in the UAE.
The Complainant further contends that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The Complainant states that the Respondent has never been a licensee or business associate of the Complainant and is not otherwise authorized to use the Complainant’s trademark. Furthermore the Respondent has not been commonly known by the disputed domain name. The Respondent’s use of the disputed domain name cannot be legitimate or fair because at the time of its registration the Respondent would have had actual knowledge of the Complainant’s trademark and of the registered tagline “THE MATTRESS PROFESSIONALS”, and the Respondent’s claim to be an authorized dealer of the Complainant is false.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s use of the SLEEPY’S trademark predates the registration of the disputed domain name by more than 30 years.
The Complainant says that the Respondent must have known of the Complainant’s rights in its SLEEPY’S trademark through readily obtainable prior knowledge. The Respondent’s use of the Complainant’s trademark is essentially identical in colour and appearance to that used on the Complainant’s own website. The Respondent’s tagline “THE MATTRESS PROFESSIONALS” on its website is identical to the Complainant’s, which has been in use since 1979. The Respondent’s claim to be an authorized dealer of the Complainant falsely suggests a relationship with the Complainant.
The Complainant contends that the Respondent has registered and is using the disputed domain name to mislead consumers by confusion into believing the associated website to be associated with or endorsed by the Complainant. The Respondent’s intention is to capture traffic from consumers looking for the Complainant’s website, for the Respondent’s commercial advantage.
The Complainant has cited a number of previous decisions under the UDRP that it desires the Panel to take into consideration.
The Complainant requests the transfer of the disputed domain name.
The Respondent says that it has no intention to enter into conflict with anybody and tries to avoid violating any law.
The Respondent says that after searching for alternatives, it settled on the disputed domain name, noting that it had not already been registered, and that the disputed domain name was far away from (i.e., distinct from) <sleepys.com>.
The Respondent contends that it is not a big company and the designer of the website could not recall clearly how the Complainant’s trademark and logo appeared on the Respondent’s website, but it might have been chosen from Internet images.
The Respondent states that it does not trade as an authorized dealer for the Complainant but sells exclusively KING KOIL branded products. The reference to being an authorized dealer meant a KING KOIL authorized dealer.
The Respondent invited the Complainant to suggest modifications to the Respondent’s website.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable provider, in compliance with the Rules, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as required by the Policy. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
The Complainant has produced evidence satisfactory to the Panel if its ownership of and rights in the registered trademark SLEEPY’S.
The disputed domain name is <sleepysuae.com>. The generic Top-Level Domain (gTLD) designation “.com” of the disputed domain name usually need not be taken into account in the determination of confusing similarity. What remains may be read as “sleepys” followed by “uae”, the latter being the well recognised abbreviation for United Arab Emirates. Therefore, the prominent term in the disputed domain name is “sleepys”, which is effectively identical to the Complainant’s trademark SLEEPY’S since apostrophes are not used in “.com” domain names. The term “uae” is found not to be distinguishing but on the contrary to add to confusing similarity since it may suggest a manifestation of the Complainant’s trademark pertaining to business in the UAE.
The Panel finds confusing similarity between the disputed domain name and the Complainant’s trademark and accordingly finds for the Complainant in the terms of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has stated a prima facie case to the effect that the Respondent has not been licensed or authorized to use the Complainant’s trademark in any way and does not have rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy provides for the Respondent to refute the Complainant’s prima facie case and to establish rights or legitimate interests in a disputed domain name by demonstrating:
“(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 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 above circumstances are without limitation.
The Respondent has said that it is in the business of selling KING KOIL bedding exclusively and that it is not an authorized dealer for the Complainant. The Respondent does not disclose any circumstances that could legitimise the use of the Complainant’s trademark as the basis of the disputed domain name or that could constitute a bona fide use of the disputed domain name.
There is no evidence or claim by the Respondent that it is commonly known by the disputed domain name, and its use of it is clearly not noncommercial.
The Panel finds that the Respondent does not have rights or legitimate interests in respect of the disputed domain name and finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant must prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have 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 your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation and bad faith may be found alternatively by the Panel.
Screen captures of two pages from the website to which the disputed domain name resolves have been produced in evidence. They show, among other things, pictures associated with sleep, slogans such as “Sleep Better Live Better”, pictures of beds and mattresses, special offers and free delivery in the UAE. The KING KOIL trademark is prominently displayed at the top in logo form, and again lower down with a piece entitled “About our brand”.
A block at the top left of the Complainant’s own website, produced in evidence, reads “SLEEPY’S” in red (with the apostrophe stylized as three yellow stars) and in smaller type beneath, “The Only Mattress Professionals”. By comparison, the Respondent’s website prominently displays at the top of the page, to the left of the KING KOIL logo, a block that reads “SLEEPYS” in typescript of similar style and red colour to the Complainant’s and, in smaller type, “The Mattress Professionals” with “AUTHORIZED DEALER” beneath.
The Respondent’s explanation that its reference to being an authorized dealer meant an authorized KING KOIL dealer is found by the Panel to be untenable, because on the Respondent’s website the wording “The Mattress Professionals AUTHORIZED DEALER” is an integral part of the block headed “SLEEPYS” and is distinct from the separate KING KOIL logo.
As a dealer exclusively in KING KOIL bedding, the Respondent is a competitor of the Complainant. The Respondent conducts business and advertises, at least in part, by means of the Internet. The Respondent cannot, however, expect to attract Internet visitors by means of a domain name featuring the registered and well known trademark of a competitor. It may reasonably be concluded that at least some Internet users seeing the format of the disputed domain name, for instance in search results, would expect it to lead to a website sponsored or endorsed by the Complainant. Furthermore the Respondent says that it sells no SLEEPY’S branded products whatsoever. On the evidence and on the balance of probabilities the Panel finds that the Respondent, by using the disputed domain name, intends for commercial gain to attract Internet users to its website by confusion, at least initially, with the Complainant’s trademark, constituting use in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent has said that it looked at alternatives before selecting the disputed domain name. The Respondent’s assertion to the effect that the disputed domain name is different from <sleepys.com> (being the Complainant’s main domain name) is indicative of knowledge of the Complainant at the time of registration. The Panel finds on the evidence and on the balance of probabilities that the Respondent registered the disputed domain name for the bad faith purpose for which it has been used.
Accordingly bad faith registration and use are found in the terms of 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 disputed domain name <sleepysuae.com> be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: August 28, 2015