WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Serta, Inc. and Dreamwell, Ltd. v. Alireza Ghazanfari, Tashil Gostar
Case No. D2019-0451
1. The Parties
The Complainants are Serta, Inc. of Hoffman Estates, Illinois, United States of America (“United States” or “US”) and Dreamwell, Ltd. of Atlanta, Georgia, United States, represented by Cantor Colburn LLP, United States.
The Respondent is Alireza Ghazanfari, Tashil Gostar of Tbilisi, Germany.
2. The Domain Name and Registrar
The disputed domain name <sertabeautyrest.com> is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2019. On February 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 28, 2019, 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. The Center sent a request for clarification to the Complainants on March 1, 2019. The Complainants filed an amendment to the Complaint on March 1, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2019.
The Center appointed Nayiri Boghossian as the sole panelist in this matter on April 10, 2019. 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 Serta, Inc. offers mattresses and bedding products under SERTA trademarks (e.g., United States Reg. No. 0582463, registered on November 17, 1953). The Complainant Dreamwell, Ltd. offers mattresses and bedding products under BEAUTYREST trademarks (e.g., United States Reg. No. 0207821, registered on January 12, 1926). The Complainants collectively own a great number of US trademark registrations for the trademarks SERTA and BEAUTYREST.
The Respondent registered the disputed domain name on August 10, 2017, which redirects to the website “www.syico.ir”.
5. Parties’ Contentions
The Complainants contend that the disputed domain name is identical or confusingly similar to trademarks in which the Complainants have rights. The Complainants own a number of US trademark registrations for the trademarks SERTA and BEAUTYREST. The Complainant Serta Inc. sells mattresses and beddings. The mark SERTA has been in use since 1938. It has received many awards. The Complainant Dreamwell Ltd. and its predecessor use the trademark BEAUTYREST since 1925. The Complainants operate websites using both trademarks and enjoy wide recognition by consumers. The disputed domain name incorporates both trademarks of the Complainants and adds the generic Top-Level Domain (“gTLD”) “.com”, and hence confusing similarity is established.
The Complainants further contend that the Respondent has no rights or legitimate interests with respect to the disputed domain name. By the time the Respondent registered the disputed domain name, the Complainants’ rights in their marks and the repute of these marks were well established. The disputed domain name resolves to a website where mattresses are sold, which is misleading the consumers. The Respondent is trying to benefit commercially from the goodwill of the Complainants’ marks and is on purpose using those marks to attract consumers. The Respondent has no prior rights in the marks. There’s no relationship between the Respondent or the Complainants and hence no authorization or license to use said trademarks. The Respondent is not commonly known by the disputed domain name. The Respondent did not respond to the Complainants’ attempts to resolve the dispute amicably.
Lastly, the Complainants submit that the disputed domain name was registered and is being used in bad faith. The Respondent must have known of the Complainants’ trademarks and their repute in the mattress industry. The Respondent is intentionally using the disputed domain name to benefit from the Complainants’ trademarks. Further, the Respondent refused to disable the disputed domain name after receiving notice by the Complainants. The Respondent is diluting the distinctiveness of the Complainants’ trademarks. It further infringes upon the intellectual property of a third party in violation of the Registrar’s Terms of Service.
The Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings
6.1. Preliminary Matter: Consolidation of Multiple Complainants
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:
“In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation”.
The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Complainant Serta, Inc. is a subsidiary of National Bedding Company L.L.C., and Dreamwell, Ltd. is a wholly-owned subsidiary of SSB Manufacturing Company (formerly known as Simmons Bedding Company), a wholly-owned subsidiary of Serta Simmons Bedding, LLC.
The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as the disputed domain name and the Respondent’s conduct infringes rights owned by both Parties.
The Panel considers that it would be equitable and procedurally efficient to permit the consolidation. The Panel therefore grants the Complainants’ request for consolidation.
6.2. Substantive Matters
A. Identical or Confusingly Similar
The Complainants hold many trademark registrations for the trademarks SERTA and BEAUTYREST. The Panel is satisfied that the Complainants have established their ownership of the trademarks SERTA and BEAUTYREST.
The disputed domain name comprises of the Complainants’ trademarks in their entirety. The gTLD “.com” may typically be ignored when assessing confusing similarity as held by prior UDRP panels.
Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademarks of the Complainants and that the Complainants have satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel finds that the Complainants have made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that they never authorized the Respondent to use their trademarks as part of the disputed domain name.
The Respondent has not provided evidence of circumstances of the types specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to rights or legitimate interests in the disputed domain name. Consequently, the Panel finds, also based on the Panel’s findings below, that the Complainants have met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainants have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Respondent clearly knew of the Complainants, their trademarks and their products. The Respondent’s knowledge is proven by the fact that the trademark SERTA particularly is very well known and sold on the international market. Both trademarks SERTA and BEAUTYREST have been registered for a very long time, SERTA has been registered since 1953, and BEAUTYREST since 1926. The disputed domain name seems to resolve to a website selling mattresses. All of the above is an indication of bad faith registration.
The Respondent has registered a confusingly similar domain name to the Complainant’s trademarks, and is using the disputed domain name to sell similar competing products to the Complainant’s products. The Panel finds that the sale of mattresses through the website of the Respondent indicates bad faith use. Additionally, the Respondent did not provide a response to the Complaint demonstrating actual or contemplated good faith use.
Therefore, the Panel concludes that the disputed domain name was registered and is being used in bad faith. Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainants have satisfied 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 <sertabeautyrest.com> be transferred to the Complainants.
Date: April 11, 2019