Associated Volume Buyers, Inc. v. Whois ID Theft Protection
Claim Number: FA0703000938086
Complainant is Associated Volume Buyers, Inc. (“Complainant”), represented by W.
Scott Creasman, of Powell Goldstein LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sleepsource.com>, registered with Rebel.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On March 29, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 18, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sleepsource.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sleepsource.com> domain name is identical to Complainant’s SLEEP SOURCE mark.
2. Respondent does not have any rights or legitimate interests in the <sleepsource.com> domain name.
3. Respondent registered and used the <sleepsource.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Associated Volume Buyers, Inc., is a collective buyer for over 2,200 member entities that are part of its Brand Source network. These entities include Sleep Source, Home Entertainment Source, Mobile Entertainment Source, Gourmet Source, Outdoor Source, and Home Rental Source. Under the SLEEP SOURCE mark, Complainant supplies mattresses to retailers, who in turn provide floor space to market Complainant’s products.
Complainant has registered the SLEEP SOURCE mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,540,982 issued February 19, 2002, filed March 3, 1999).
Respondent’s <sleepsource.com> domain name, which it registered on September 20, 1996, resolves to a website with links such as “Mattresses” and “Bunk Bed” that redirect Internet users to websites selling mattress products in direct competition with Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has
registered the SLEEP SOURCE mark with the USPTO. While this trademark registration does not
predate Respondent’s registration of the <sleepsource.com> domain
name, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to have
registered the mark before the registration of the domain name. See AB
Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the
UDRP Policy does not require a complainant to have registered its trademark
prior to the respondent’s registration of the domain name under Policy ¶
4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772
(Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that
its rights in its mark predate the respondent’s registration of the disputed
domain name in order to satisfy Policy ¶ 4(a)(i)). Thus,
Complainant has established rights in the SLEEP SOURCE mark in accordance with
Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum
With respect to the identical or confusingly similar prong
of Policy ¶ 4(a)(i), Respondent has failed to distinguish the <sleepsource.com> domain name
from Complainant’s SLEEP SOURCE mark by incorporating the entire mark,
eliminating the space between terms of the mark, and adding the generic
top-level domain (“gTLD”) “.com.”
Accordingly, the Panel finds that the disputed domain name is identical
to Complainant’s SLEEP SOURCE mark under Policy ¶ 4(a)(i). See Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (concluding that the
<redhat.org> domain name is identical to the complainant’s RED HAT mark
because the mere addition of a gTLD was insufficient to differentiate the
disputed domain name from the mark); see
also Jerry Damson, Inc. v. Tex. Int’l Prop.
Assocs., FA 916991 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant bears the initial burden of making a prima facie case that Respondent lacks rights and legitimate interests in the <sleepsource.com> domain name. If Complainant makes a prima facie case, then the burden shifts to Respondent to prove that it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant under Policy ¶ 4(c), the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the complainant must show that the respondent has no rights to or legitimate interests in the subject domain name and that once the complainant makes this showing, the burden of production shifts to the respondent to rebut the complainant’s allegations).
In this case, Respondent has failed to take advantage of the
opportunity to respond to the Complaint.
Consequently, the Panel presumes that Respondent does not have any
rights or legitimate interests in the <sleepsource.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9,
2000) (finding that by not submitting a response, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also
Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the panel to draw adverse inferences from the
respondent’s failure to reply to the complaint). Nevertheless, the Panel will now examine the
record to determine if Complainant has satisfied its burden under the factors
listed in Policy ¶ 4(c).
Respondent’s use of the <sleepsource.com>
domain name to display links to websites that compete with Complainant is not a
bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). The
panels in both Or. State Bar v. A Special Day,
Inc., FA 99657 (Nat. Arb. Forum
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant holds a trademark registration for the SLEEP SOURCE mark with the United States Patent and Trademark Office (Reg. No. 2,540,982 issued February 19, 2002, filed March 3, 1999) and alleges a first use of the mark in 2000. While Complainant’s trademark registration for the SLEEP SOURCE mark is sufficient to satisfy Policy ¶ 4(a)(i), Respondent registered the <sleepsource.com> domain name on September 20, 1996, four years before Complainant’s first use of the mark. Therefore, it does not appear that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
When a respondent’s domain name registration predates the
complainant’s first use of a mark, previous panels have denied the complainant
relief under the Policy. See Javacool
Software Dev., L.L.C. v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum
Respondent did not register the <sleepsource.com> domain name in bad faith and could not have done so because the domain name was registered before Complainant began using the SLEEP SOURCE mark. There is no proof of any use of the SLEEP SOURCE mark as a common law trademark prior to 2000.
The Panel concludes that Complainant has NOT satisfied Policy ¶ 4(a)(iii).
Complainant having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
James A. Carmody, Esq., Panelist
Dated: May 3, 2007
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